ALLDATA LLC v. Above.com Domain Privacy
Claim Number: FA1302001487886
Complainant is ALLDATA LLC (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alldatacollison.com>, <alldatatdiy.com>, <alldataopro.com>, and <alldatalogin.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 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 February 28, 2013; the National Arbitration Forum received payment on February 28, 2013.
On February 28, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <alldatacollison.com>, <alldatatdiy.com>, <alldataopro.com>, and <alldatalogin.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 March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@alldatacollison.com, postmaster@alldatatdiy.com, postmaster@alldataopro.com, postmaster@alldatalogin.com. Also on March 6, 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 April1, 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
1. Complainant is the leading provider of automotive repair information and solutions to the professional automotive service industry. Complainant is a subsidiary of AutoZone, Inc. (“AutoZone”), one of the world’s largest automotive parts retailers.
2. Complainant has registered and common law trademark rights in the marks ALLDATA, ALLDATA COLLISION, ALLDATA COLLISION CONNECT, ALLDATA DIY, ALLDATA REPAIR, ALLDATA MANAGE, and ALLDATA MARKET.
3. In particular, Complainant has rights in the U.S. Reg. Nos.1, 556,655 and 2,571,052 trademarks for ALLDATA and also USPTO registrations for ALLDATA REPAIR, ALLDATA MANAGE, ALLDATA MARKET, ALLDATA COLLISION and ALLDATA COLLISSION CONNECT.
4. Complainant also has registrations for its ALLDATA family of marks in numerous countries around the world.
5. Respondent registered the Domain Names on the following dates:
(1) <alldatacollison.com>: September 9, 2007
(2) <alldatatdiy.com>: August 12, 2011
(3) <alldataopro.com>: November 29, 2011
(4) <alldatalogin.com>: June 16, 2011.
6. In addition to its website at www.alldata.com, Complainant operates websites at two other relevant domain names. The domain name <alldatapro.com> serves as a domain name for the ALLDATA REPAIR product and its corresponding website. This domain name has been registered and used continuously since 1997. The domain name <alldatadiy.com> serves as the address for ALLDATA’s website targeted to do-it-yourself customers. This domain name has been registered and used continuously since 1999.
7. The disputed domain names are identical or confusingly similar to Complainant’s ALLDATA marks.
(a) Complainant owns valid and enforceable rights in the ALLDATA marks.
(b) Each of the domain names contains Complainant’s ALLDATA mark in its entirety together with the top level domain ”.com” together and other expressions that clearly connote various divisions of Complainant’s business.
(c) Moreover, the domain name <alldatacollison.com> and the domain name <alldatatdiy.com>: are only one letter different from Complainant’s ALLDATA DIY and ALLDATA COLLISION trademarks and are obvious typographical misspellings of the marks.
(d) In the case of the <alldataopro.com> and <alldatalogin.com> domain names, the addition of the generic expressions “pro” and “login” do not lessen the likelihood of consumer confusion.
(e) All of the disputed domain names are therefore confusingly similar to the ALLDATA marks.
8. Respondent has no rights or legitimate interests in the disputed domain names.
(a) All of the domain names are an attempt to trade off the well established name of Complainant and it trademarks.
(b) Respondent is currently using or has used the Domain Names as the addresses for web pages that include links to a number of third party websites. Respondent is either paid for including the links on the sites, or the links
are pay-per-click links and Respondent earns revenue through redirecting Internet traffic to the sites. These links include links to the websites of competitors of Complainant and its parent company AutoZone, as well as other automotive diagnostic and repair websites.
(c) The use of the domain names to host websites with links to Complainant’s competitors does not give rise to a bona fide right or interest.
(d) The domain names <alldataopro.com>,<alldatatdiy.com> and <alldatacollison.com> are typosquatted forms of the ALLDATA COLLISION and ALLDATA COLLISION CONNECT marks and Complainant’s <alldatacollision.com>,<alldatadiy.com> and <alldatapro.com> domain names.
(e) There is no other ground on which Respondent can establish a right or legitimate interest in the disputed domain names.
9. The disputed domain names were registered and have been used in bad faith.
(a) Respondent is plainly intending to target Complainant and its businesses by typosquatting and capturing Complainant’s customers and redirecting them elsewhere for profit.
(b) Respondent is currently using or has used the Domain Names as the addresses for web pages that include links to a number of third party websites.
(c) Respondent is either paid for including the links to those sites, or the links
are pay-per-click links and Respondent earns revenue through redirecting Internet traffic to the sites of competitors of Complainant and its parent AutoZone, as well as other automotive diagnostic and repair websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the leading provider of automotive repair information and solutions to the professional automotive service industry.
2. Complainant has trademark rights in the ALLDATA .mark by U.S. Reg. Nos. 1,556,655, registered on September 19,1989 and 2,571,052, registered on May 21, 2002 and also USPTO registrations for ALLDATA REPAIR, ALLDATA MANAGE, ALLDATA MARKET, ALLDATA COLLISION and ALLDATA COLLISION CONNECT ,
3. Complainant’s rights in its ALLDATA marks are reflected in registrations in numerous countries around the world.
4. Respondent registered the Domain Names on the following dates:
(1) <alldatacollison.com>: September 9, 2007
(2) <alldatatdiy.com>: August 12, 2011
(3) <alldataopro.com>: November 29, 2011
(4) <alldatalogin.com>: June 16, 2011.
5. Respondent is currently using or has used the Domain Names as the addresses for web pages that include links to a number of third party websites. Respondent is either paid for including the links on the sites, or the links
are pay-per-click links and Respondent earns revenue through redirecting Internet traffic to the sites. These links include links to the websites of competitors of Complainant and its parent company AutoZone, as well as other automotive diagnostic and repair websites.
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 argues that it established rights in the ALLDATA mark when it registered the mark with the USPTO. In that regard, Complainant has adduced evidence of a series of registrations with USPTO, which the Panel accepts, including U.S. Reg. Nos.1, 556,655, registered on September 19, 1989 and 2,571,052, registered on May 21, 2002 for ALLDATA (“the ALLDATA mark”) and other USPTO registrations for ALLDATA REPAIR, ALLDATA MANAGE, ALLDATA MARKET, ALLDATA COLLISION and ALLDATA COLLISION CONNECT (“the family of ALLDATA marks”). Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the ALLDATA mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant’s trademark rights have also been established in the cases cited by Complainant, ALLDATA LLC v. Caiyong c/o Caiyong Caiyong, FA 0712001118372, (Nat. Arb. Forum, Jan. 17, 2008) and ALLDATA LLC v. Bo Wang, FA 0905001265165 (Nat. Arb. Forum, July 6, 2009).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ALLDATA mark. Complainant argues that Respondent’s <alldatacollison.com>, <alldatatdiy.com>, <alldataopro.com>, and <alldatalogin.com> are all confusingly similar to Complainant’s ALLDATA mark. The Panel agrees with this submission and finds that all of the domain names are confusingly similar to the ALLDATA mark. That is so for the following reasons. First, the Panel notes that all of the disputed domain names include the generic top-level domain (“gTLD”) “.com, but it is now well established that the top level domain cannot negate a finding of confusion similarity that otherwise exists. Secondly, as Complainant rightly submits, all of the domain names include the entire ALLDATA mark. Thirdly, each of the domain names is clearly an attempt to evoke the Complainant’s business or some aspect of it. In the case of the <alldatacollison.com> domain name, Respondent has made a slight spelling alteration to the word “collision” by omitting the letter “I” and added it to the ALLDATA mark. The resulting domain name is confusingly similar to the ALLDATA trademark as internet users would naturally assume that it was referring to automotive repairs to be done as the result of collisions, an obvious connection with Complainant and its business. In any event, Complainant has a registered trademark for ALLDATA COLLISION itself as part of the family of ALLDATA marks and the domain name has been created by taking the entire ALLDATA COLLISION trademark and deleting the letter “i” and the space between the two constituent words, so the domain name is an obvious attempt to trade on Complainant’s mark. In the case of the <alldatatdiy.com> domain name , Respondent has taken the entire ALLDATA trademark and added the “letters” “diy” which are widely understood to mean “do- it-yourself”, thus evoking the name ALLDATA DIY, which is a business of Complainant to enable customers to effect automotive repairs themselves. Respondent has then added the latter “t” before “diy” as an obvious act of typosquatting to trade on typing mistakes made by internet users. In the case of the <alldataopro.com>, domain name, this also consists of the entire ALLDATA trademark together with the word “opro” which is clearly a misspelt version of the word ”pro.” Complainant has a business named ALLDATA REPAIR which has used <alldatapro.com” as its domain name since 1997 and the disputed domain name is clearly an attempt to evoke that business of Complainant in the minds of internet users and also to trade on typing mistakes made by internet users. In the case of the <alldatalogin.com> domain name, Complainant’s principal website at www.alldata.com has a link titled “Login Center” and the <alldatalogin.com> domain name has the effect of evoking in the minds of internet users that the domain name will lead to Complainant’s login facility. In any event, the name and mark ALLDATA are so prominent, as has been established by the evidence that the addition of words such as those just discussed must inevitably be taken by internet users to be referring to Complainant and its business.
The Panel therefore concludes that Respondent failed to differentiate the disputed domain names from the ALLDATA mark and the family of ALLDATA marks and that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a) (I). See on these various issues: Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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); and 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).
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. Arab. 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. Gerber, FA 780200 (Nat. Arab. 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 ALLDATA trademark and to use it in its domain names, adding additional words and making minor spelling alterations to them, in each case echoing established businesses of Complainant and giving the false impression by the construction of the domain names that they are official domain names of Complainant and will lead to official websites of Complainant’s various businesses;
(b) Respondent has then used the domain names as the addresses for web pages that include links to a number of third party websites, giving rise to the inference that Respondent is either paid for including the links on the sites, or the links are pay-per-click links and Respondent earns revenue through redirecting Internet traffic to the sites. These links include links to the websites of competitors of Complainant and its parent company AutoZone, as well as other automotive diagnostic and repair websites.
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant submits that the disputed domain names resolve to websites featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s businesses and those of its parent company. Complainant argues that Respondent receives pay-per-click fees from the linked websites. The Panel agrees with those submissions and they are supported by evidence adduced by Complainant and examined by the Panel. Based upon that evidence of use of the domain names, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c) (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant also asserts that Respondent engaged in typosquatting when it composed the <alldatacollison.com>, <alldatatdiy.com> and <alldataopro.com> domain names and the Panel agrees with this submission.
In the case of the <alldatacollison.com>, domain name Respondent is typosquatting the ALLDATA COLLISION mark itself and in the cases of the <alldatatdiy.com> and <alldataopro.com> domain names it is misspelling the domain name used by Complainant in its do-it-yourself business and the domain name used by Complainant in its ALLDATA REPAIR business respectively. This is in itself evidence that Respondent has no rights or legitimate interests in those three domain names. The Panel is of the view that variations made to Complainant’s ALLDATA COLLISION mark and to words closely associated with Complainant’s businesses illustrates that Respondent sought to take advantage of typographical errors made by Internet users—conduct previous panels have found to deprive a respondent of a finding in favor of Policy ¶ 4(a)(ii) rights and legitimate interests. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).In summary, the three domain names all target aspects of Complainant’s business by containing typosquatted variations of its mark or domain names.
In addition, in the case of <alldatalogin.com>, Respondent targets an integral part of a product of Complainant namely its “Login Center.
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.
Registered and Used in Bad Faith
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 contends that Respondent has set up the <alldatacollison.com>, <alldatatdiy.com>, <alldataopro.com>, and <alldatalogin.com> domain names to target Complainant and it businesses and to operate as click-through websites, which exist to generate advertising revenue through the redirection of misled Internet users to competing third-party websites. Complainant believes that Respondent is taking advantage both of Complainant’s well known mark and reputation and the likelihood that Internet users will confuse Complainant as to the source of the content on the disputed domain names’ resolving websites. The Panel agrees with this submission and the evidence adduced in its support which it has examined and finds that the conduct of Respondent constitutes Policy ¶ 4(b)(iv) bad faith use and registration. 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).
Secondly, Complainant argues that Respondent’s typosquatting is in itself evidence that Respondent has acted in bad faith. The Panel agrees and finds that such conduct shows Respondent’s Policy ¶ 4(a)(iii) bad faith use. 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).”).
Thirdly, the Panel agrees with the contention of Complainant that it open on the evidence to reach the conclusion that Respondent’s intention in registering the disputed domain names was not only to generate profit, but to induce Complainant to offer buy the domain names for more than Respondent’s out-of-pocket costs and that this is further bad faith by virtue of the provisions of Paragraph 4(b)(i) of the Policy.
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 ALLDATA 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 <alldatacollison.com>, <alldatatdiy.com>, <alldataopro.com>, and <alldatalogin.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: April 4, 2013
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