AutoZone Parts, Inc. v. Modern Empire Internet Ltd.
Claim Number: FA1304001497108
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Suzanne Werner of Alston & Bird LLP, Georgia, USA. Respondent is Modern Empire Internet Ltd. (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utozone.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2013; the National Arbitration Forum received payment on April 29, 2013.
On April 29, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <utozone.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. 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 April 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@utozone.com. Also on April 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 May 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, AutoZone Parts, Inc. is one of the world’s largest retailers of automotive parts and accessories; Complainant has spent substantial resources over several years to promote its goods and services using the AUTOZONE mark, by advertising in media such as television, radio, and the Internet. Complainant has used the AUTOZONE mark continuously since 1987, and has since that time made longstanding and widespread use of the mark and other AUTOZONE formative marks.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AUTOZONE mark (e.g., Reg. No. 1,550,569 registered August 1, 1989). Complainant also owns a trademark with China’s State Administration for Industry and Commerce (“SAIC”) for the AUTOZONE mark (e.g., Reg. No. 1,531,562, registered February 28, 2001), with the European Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 001084078 registered May 15, 2001), and with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA464,912 registered October 25, 1996), among other international trademark registrations.
The domain name is confusingly similar to the AUTOZONE mark because it is identical to the mark with only the letter “a” missing.
Respondent has no rights or legitimate interests in the domain name. Respondent has no connection or affiliation with Complainant. Complainant has not at any time licensed or authorized Respondent to use the AUTOZONE marks in the domain name or in any other manner. Respondent uses the AUTOZONE mark as a link at least four times on the home page of the website located at the domain name. By clicking on these links, Internet users are redirected to a subpage within Respondent’s website that contains a link to Complainant’s website as well as the websites of Complainant’s competitors. Respondent’s actions constitute typosquatting, a practice whereby a confusingly similar domain name is registered with the intention of attracting Internet traffic through commonly made typographical errors.
Respondent has registered and used the domain name in bad faith. Respondent’s use of the domain name to redirect Internet users to third-party websites, including to Complainant’s competitors, evidences not only an intent to profit from that redirection but also an intent to host content that is damaging to Complainant in hopes that Complainant will ransom the domain name from Respondent in an amount that exceeds its out-of-pocket costs association with registration of the name.
Respondent has transparently registered a misspelling of the AUTOZONE mark as its domain name to capture Internet traffic searching for Complainant, or Complainant sponsored or endorsed website, and to then redirect that traffic to third party websites for Respondent’s financial gain.
Respondent registered the domain name <utozone.com> on March 16, 2004.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns multiple trademark registrations for its AUTOZONE mark including registration with the USPTO and SAIC, as well as other registries worldwide.
Complainant has not authorized Respondent to uses its trademark in any capacity.
Complainant’s rights in AUTOZONE predate Respondent’s registration of the at-issue domain name.
Respondent uses the at-issue domain name redirect Internet users to third-party websites, including to Complainant’s competitors.
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.”).
Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Complainant’s registration of the AUTOZONE mark with multiple international trademark authorities sufficienty establishes its rights in a mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
The second level of Respondent’s at-issue domain name is identical to Complainant’s mark without its leading letter “a”. Respondent’s removal of this single letter from Complainant’s mark to form the at-issue domain name does not materially differentiate the domain name from Complainant’s mark for the purposes of the Policy, nor does the addition of the generic top level domain name “.com”. Therefore, the Panel finds that Respondent’s <utozone.com> domain name is confusingly similar to Complainant’s AUTOZONE mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark(s) in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Relevant WHOIS information lists “Modern Empire Internet Ltd.” as the registrant of the at-issue domain name and there is no evidence of record that tends to show that despite the WHOIS information Respondent is nevertheless commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <utozone.com> domain name for the purpose of Policy ¶ 4(c)(ii). 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).
Respondent uses the AUTOZONE mark as a link at least four times on the home page of the website addressed by the <utozone.com> domain name. By clicking on such links, Internet users are redirected to a subpage within Respondent’s website that contains additional links to Complainant’s website as well as the websites of Complainant’s competitors. The <utozone.com> domain name thereby addresses a hyperlink directory listing links for “Auto Zone Auto Parts Store,” “Auto Engine Part,” “Autopartes VW,” and others. Respondent’s use of the at-issue domain name to provide competing hyperlinks 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).
Additionally, Respondent’s behavior in registering and using the at-issue domain name constitute typosquatting, a practice whereby a confusingly similar domain name is registered with the intention of attracting Internet traffic through commonly made typographical errors. In the <utozone.com> domain name, the AUTOZONE mark is misspelled by the omission of the letter “a.” Typosquatting indicates that Respondent lacks rights and legitimate interests in an at-issue domain name under Policy ¶ 4(a)(i). 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).”).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the domain name to redirect Internet users to third-party websites, including to Complainant’s competitors, evidences not only Respondent’s intent to profit from that redirection but also its intent to host content that is damaging to Complainant. Absent any evidence supporting Respondent’s good faith use of the domain name it may be reasonable to assume, as Complainant urges, that Respondent may later “ransom the domain name from Respondent in an amount that exceeds its out-of-pocket costs” associated with registration of the name. These circumstances seem to suggest Respondent’s violation of 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).
Furthermore, Respondent has transparently registered a mistyped variant of the AUTOZONE mark for a domain name with the intent to divert Internet users searching for Complainant and then redirect that traffic to third party websites for financial gain. Notably and as mentioned above, Respondent’s <utozone.com> domain name resolves to a hyperlink directory listing links for “Auto Zone Auto Parts Store,” “Auto Engine Part,” “Autopartes VW,” and others. Respondent’s use of the at-issue domain name in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). 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.’”).
Finally, Respondent’s typosquatting is, in itself, additional evidence that Respondent registered the <utozone.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <utozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 3, 2013
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