AutoZone Parts, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001497170
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 <auotzone.com>, registered with Internet.bs Corp.
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.
Darryl C. Wilson, 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 30, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <auotzone.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 May 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@auotzone.com. Also on May 7, 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 June 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant
A. Complainant contends it has rights in the AUTOZONE mark, used in connection with the retail sale of automotive parts. Complainant is the owner of registrations for the AUTOZONE mark (e.g., Reg. No. 1,496,638 registered July 19, 1988) with the United States Patent and Trademark Office (“USPTO”) and the Intellectual Rights Department (“DDI”) in Chile (Reg. No. 572,853 registered July 27, 2000). See Complainant’s Exhibit D and Complainant’s Amended Exhibit E.
B. The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <auotzone.com> domain name is identical to Complainant’s mark with the exception of the transposition of the letters “t” and “o” and thus constitutes a misspelling of Complainant’s mark.
C. Respondent does not own any rights or have any legitimate interests in the <auotzone.com> domain name.
a. Respondent is known as “PPA Media Services / Ryan G. Foo.”
b. Respondent is not using the AUTOZONE mark in connection with a bona fide offering of goods or services, nor is Respondent making any legitimate noncommercial offering or fair use.
i. Respondent utilizes the disputed domain name to display links to automotive-related websites, including Complainant’s competitors. See Complainant’s Amended Exhibit G.
ii. Respondent’s use of the disputed domain name to redirect Internet users to third-party websites is an attempt to profit from consumer confusion. Such use does not give rise to any bona fide rights or interests in the disputed domain name.
c. Respondent is aware of Complainant and its mark because Respondent registered a misspelling of Complainant’s famous mark as the disputed domain name.
d. Respondent’s actions constitute typosquatting.
D. Respondent has registered and uses the domain name in bad faith
a. Complainant reminds the Panel that the four factors listed in Policy ¶4(b) are not exhaustive, and the Panel may consider other circumstances in order to determine bad faith use and registration.
b. Respondent is a serial cyber pirate. Complainant alleges Respondent has been ordered to transfer domain names in at least 39 different arbitration decisions. See Exhibit I.
c. Respondent has registered the disputed domain name to capture Internet traffic for Respondent’s own financial gain.
i. The disputed domain name includes links to third-party websites, including sites of Complainant’s competitors. See Complainant’s Amended Exhibit G.
d. Complainant believes Respondent is hoping that Complainant will offer to purchase the disputed domain name from Respondent for an amount that exceeds Respondent’s out-of-pocket expenses associated with registration of the name. Although Respondent has not made an offer to sell, Complainant contends this is because such an offer would constitute a clear violation of ICANN Policy.
Respondent
A. Respondent failed to submit a Response in this proceeding.
Complainant is AutoZone Parts, Inc., which list its address as Memphis, TN, USA. Complainant is the owner of domestic and international registrations for its mark AUTOZONE which it uses in connection with the sale of automotive parts and accessories. Complainant has used its mark continuously since at least as early as 1988. Complainant offers its goods and services online as well at its official website <autozone.com>.
Respondent is PPA Media Services/Ryan G Foo who’s address is listed as Santiago, Chile. Respondent’s registrar’s address is listed as Nassau, The Bahamas. Respondent registered the <auotzone.com> domain name on November 9, 2005.
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 contends it has rights in the AUTOZONE mark, used in connection with the retail of automotive parts. Complainant claims to be the owner of registrations for the AUTOZONE mark with the USPTO (e.g., Reg. No. 1,496,638 registered July 19, 1988) and the DDI in Chile (Reg. No. 572,853 registered July 27, 2000). See Complainant’s Exhibit D and Complainant’s Amended Exhibit E. The Panel finds that Complainant has rights in the AUTOZONE mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s mark. Complainant argues that Respondent’s <auotzone.com> domain name is identical to Complainant’s mark with the exception of the transposition of the letters “t” and “o” and thus constitutes a misspelling of Complainant’s AUTOZONE mark. The Panel notes that the disputed domain name contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that transposing letters does not create a distinct mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel also finds that the gTLD “.com” is not relevant to Policy ¶ 4(a)(i) analysis. 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). The Panel finds that Respondent’s <auotzone.com> domain name is confusingly similar to Complainant’s AUTOZONE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent does not own any rights or have any legitimate interests in the <auotzone.com> domain name. Complainant states that Respondent is known as “PPA Media Services / Ryan G. Foo.” The Panel notes that the WHOIS record for the <auotzone.com> domain name supports this assertion, listing Respondent as “PPA Media Services / Ryan G. Foo.” Complainant claims to have no connection or other affiliation with Respondent, and further claims to have never licensed or authorized Respondent’s use of the AUTOZONE mark in a domain name or for any other use. The Panel finds that Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant next alleges Respondent is not using the AUTOZONE mark in connection with a bona fide offering of goods or services, nor is Respondent making any legitimate noncommercial offering or fair use. Complainant asserts that Respondent utilizes the disputed domain name to display links to automotive-related websites, including Complainant’s competitors. See Complainant’s Amended Exhibit G. Complainant states that Respondent’s use of the disputed domain name to redirect Internet users to third-party websites is an attempt to profit from consumer confusion. Panels have found such a use does not constitute a bona fide offering of goods or services or a legitimate noncommercial offering or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the <auotzone.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant reminds the Panel that the four factors listed in Policy ¶4(b) are not exhaustive, and the Panel may consider other circumstances in order to determine bad faith use and registration. Therefore, the Panel may consider circumstances outside of those specifically listed in Policy ¶4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant contends that Respondent is a serial cyber pirate. Complainant alleges Respondent has been ordered to transfer domain names in at least 39 different arbitration decisions. See Exhibit I. Panels have found this type of pattern to be evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds that Respondent’s pattern of bad faith registration and use is evidence of Respondent’s bad faith registration and use in this case under Policy 4(b)(ii).
Complainant alleges Respondent has registered the disputed domain name to capture Internet traffic for Respondent’s own financial gain. Complainant asserts the disputed domain name includes links to third-party websites, including sites of Complainant’s competitors. See Complainant’s Exhibit G. The Panel finds that Respondent intentionally attempted to take commercial advantage of Internet users’ mistakes and thus registered and uses the <auotzone.com> domain name in bad faith under Policy ¶ 4(b)(iv). 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).
Lastly, Complainant alleges Respondent’s conduct constitutes typosquatting. By creating a domain name that is confusingly similar to Complainant’s mark and utilizing a commonly-made typographical error, Respondent is intentionally attracting Internet traffic to the disputed domain name. Panels have found such conduct to represent bad faith use and registration. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel finds that Respondent’s typosquatting is a bad faith use and registration under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <auotzone.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 16, 2013
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