AutoZone Parts, Inc. v. Above.com Legal
Claim Number: FA1304001497171
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Suzanne Werner of Alston & Bird LLP, Georgia, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wautozone.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.
James A. Carmody, Esq., 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, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <wautozone.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. 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 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@wautozone.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 March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <wautozone.com> domain name, the domain name at issue, is confusingly similar to Complainant’s AUTOZONE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc., is one of the world’s largest retailers of automotive parts and accessories, and has expended significant time and money resources to promote its AUTOZONE mark in North and South America.
Complainant has used the AUTOZONE mark since as early as 1987 and has continuously made use of the mark in commerce, through promotional and marketing efforts. The AUTOZONE mark is recognized by consumers, and a brand valuation study ranked the brand name as the 21st most valuable brand in 2012. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AUTOZONE mark (e.g., Reg. No. 1,496,638, registered July 19, 1988). Complainant also owns a trademark registration with Australia’s Attorney General Department for the AUTOZONE mark (Reg. No. 1,296,289, registered April 27, 2009).
The domain name at issue is confusingly similar to the AUTOZONE mark because it is identical to the mark with only the letter “w” added. Respondent has no connection or affiliation with Complainant and 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’s current use of the domain name to redirect traffic to third-party websites is a blatant attempt to profit from consumer confusion and trade on the fame and goodwill of the AUTOZONE marks for Respondent’s own commercial benefit. 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’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 pay Respondent an amount that exceeds its out-of-pocket registration costs in exchange for the domain name. Respondent has registered a misspelled version of the AUTOZONE mark as its domain name to capture Internet traffic searching for Complainant, or a 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 <wautozone.com> on February 2, 2011.
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, AutoZone Parts, Inc., is one of the world’s largest retailers of automotive parts and accessories, and owns rights in the AUTOZONE mark through tits USPTO trademark registration (e.g., Reg. No. 1,496,638, registered July 19, 1988). Complainant also owns a trademark registration for the AUTOZONE mark with Australia’s trademark authority, IP Australia (Reg. No. 1,296,289, registered April 27, 2009). Complainant’s registration of the AUTOZONE mark with IP Australia and the USPTO sufficiently proves its rights in the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The <wautozone.com> domain name is confusingly similar to the AUTOZONE mark because it uses the entire mark, with only the letter “w” added.
Respondent’s addition of a letter to Complainant’s mark does not negate confusing similarity under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name, but this addition of a gTLD to a domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel finds that Respondent’s <wautozone.com> domain name is confusingly similar to Complainant’s AUTOZONE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no connection or affiliation with Complainant and Complainant has not at any time licensed or authorized Respondent to use the AUTOZONE marks in the domain name or in any other manner. The WHOIS information for the <wautozone.com> domain name identifies “Above.com Legal” as the registrant. Respondent does not provide evidence that it is known by the domain name, and, therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Respondent’s current use of the domain name to redirect traffic to third-party websites is a blatant attempt to profit from consumer confusion and trade on the fame and goodwill of the AUTOZONE mark for Respondent’s own commercial benefit. Respondent’s disputed domain name resolves to a website featuring competing hyperlinks titled “Transmission Specialists,” “Goodyear Tire & Service,” “Advance Auto Parts,” and others. Respondent’s use of the disputed domain name to provide competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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”).
By registering the <wautozone.com> domain name, Respondent engages in typosquatting, which demonstrates Respondent’s lack of rights or legitimate interests in the domain. Respondent’s typosquatting behavior is evidence that Respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). 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 Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the domain name to redirect Internet users to third-party websites, including to Complainant’s competitors, proves not only an intent to profit from that redirection but also an intent to host content that is damaging to Complainant such that Complainant would feel compelled to purchase the domain name from Respondent in an amount that exceeds its out-of-pocket costs associated with registration. Presumably, Respondent registered the domain name with the intention of selling the domain. Accordingly, the Panel finds that Respondent has registered and used the domain name in bad faith pursuant to 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).
Further, Respondent has registered a misspelling of the AUTOZONE mark as its domain name to capture Internet traffic searching for Complainant, or a Complainant-sponsored or endorsed website, and to then redirect that traffic to third-party websites for Respondent’s financial gain. These third party websites include the sites of Complainant’s competitors, including Advance Auto Parts. Respondent’s disputed domain name resolves to a website featuring competing hyperlinks titled “Transmission Specialists,” “Goodyear Tire & Service,” “Advance Auto Parts,” and others. Thus, the Panel finds that Respondent’s use of the domain name to provide competing links diverts Internet traffic from Complainant’s site to its own website, demonstrating bad faith use and registration 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wautozone.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 29, 2013
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