AutoZone Parts, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001492382
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Suzanne Werner of Alston & Bird LLP, Georgia, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <auozone.com>, registered with Internet.Bs Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2013; the National Arbitration Forum received payment on April 1, 2013.
On April 2, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <auozone.com> 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 April 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@auozone.com. Also on April 4, 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 May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
i. Complainant claims rights in the AUTOZONE trademark pursuant to its multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,501,718 registered Aug. 23, 1988), as well as with Chile’s National Institute of Industrial Property (Reg. No. 572,850 registered July 27, 2000) in the country of Respondent.
ii. Respondent registered the <auozone.com> domain name on May 27, 2010.
iii. The disputed domain name replicates Complainant’s mark in its entirety, with only the deletion of the letter “t” and the addition of the generic top-level domain (“gTLD”) “.com.”
i. Respondent has no connection or affiliation with Complainant, and Complainant has not authorized Respondent to use its AUTOZONE mark.
ii. Respondent is using the disputed domain name to redirect unsuspecting internet users to a website featuring links to Complainant’s website, as well as to third party websites, some of which directly compete with Complainant’s services.
iii. Respondent is typosquatting, which itself demonstrates a lack of legitimate interests.
i. Though Respondent has not offered to sell the domain name, Respondent’s use of the disputed domain name to redirect Internet users to third party websites indicates an intent to sell the domain name to Respondent in an excessive amount. This represents bad faith under Policy ¶ 4(b)(i).
ii. Respondent is using the disputed domain name to divert Internet traffic searching for Complainant, likely for its own commercial gain. The is bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its AUTOZONE mark.
2. Respondent’s <auozone.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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 rights in the AUTOZONE trademark based on its multiple registrations of the mark with the USPTO (e.g., Reg. No. 1,501,718 registered Aug. 23, 1988), as well as in Respondent’s country, Chile, with the National Institute of Industrial Property (Reg. No. 572,850 registered July 27, 2000). See Complainant Exhibits D & E. The Panel notes that previous panels have found that a complainant’s registration of a mark with multiple trademark authorities is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the AUTOZONE mark.
Complainant claims that the <auozone.com> domain name is confusingly similar to its AUTOZONE mark. Complainant notes that the disputed domain name replicates Complainant’s entire mark, adding only the gTLD “.com” and deleting the letter “t.” The Panel notes that past panels have found neither a gTLD nor a missing letter sufficient to distinguish a domain name from a mark. See 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); see also 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). Therefore the Panel finds that Respondent’s <auozone.com> domain name is confusingly similar to Complainant’s AUTOZONE mark for the purposes of Policy ¶ 4(a)(i).
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 claims that Respondent has no connection or affiliation with Complainant, and that Complainant has not authorized Respondent to use its AUTOZONE mark. The Panel notes that the WHOIS records for the <auozone.com> domain name list “PPA Media Services / Ryan G Foo” as the domain name registrant. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant also claims that Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant notes that Respondent is using the disputed domain name to redirect users to a web page featuring links to Complainant’s own site as well as to third-party websites, some of which compete with Complainant’s business (such as “Napa Online Auto Parts”). See Complainant’s Exhibit G. Because past panels have found that the display of competing hyperlinks on a resolving website does not demonstrate a bona fide offering or a legitimate noncommercial or fair use of a disputed domain name, this Panel also finds that Respondent has not demonstrated rights or legitimate interests under Policy ¶¶ 4(c)(i) or 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).
Complainant also describes Respondent’s behavior as typosquatting, a practice that involves preying on the typing errors of Internet users, and claims that Respondent’s typosquatting demonstrates a lack of rights or legitimate interests. The Panel notes that past panels have found typosquatting to be evidence of a lack of rights or legitimate interests. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent is engaged in typosquatting, and holds that Respondent does not have rights or legitimate interests in the <auozone.com> domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the disputed domain name for the purpose of selling it to Complainant in an amount in excess of Respondent’s out-of-pocket costs, and that this is evidence of bad faith under Policy ¶ 4(b)(i). Complainant admits that Respondent has not actually offered the disputed domain name for sale, but contends that Respondent’s linking to third party websites evidences an intent to sell. under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). However, in the absence of an actual allegation of an offer to sell the disputed domain name, the Panel declines to find bad faith under Policy ¶ 4(b)(i).
Complainant further argues that Respondent is intentionally using a domain name confusingly similar to Complainant’s AUTOZONE mark in order to attract Internet users to its website for profit. Complainant alleges that Respondent uses the resolving website to redirect Internet traffic to third party websites for Respondent’s financial gain. The Panel notes that past panels have found such a deliberate diversion for profit to be evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Accordingly, the Panel agrees that Respondent is trying to profit by attracting users seeking Complainant’s website, and finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <auozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 15, 2013
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