Claim Number FA1305001501416
AutoZone Parts, Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Suzanne Werner of Alston & Bird LLP, Georgia, USA. Respondent is LAKSH INTERNET SOLUTIONS PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwautozone.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 23, 2013; the National Arbitration Forum received payment on May 23, 2013.
On May 24, 2013, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail message addressed to the National Arbitration Forum that the <wwautozone.com> domain name is registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the name. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED has verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED 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 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 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@wwautozone.com. Also on May 29, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 19, 2013, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 uses the AUTOZONE mark in connection with the sale of automot-ive parts and accessories.
Complainant holds registrations for the AUTOZONE mark, on file with the United States Patent Trademark Office (“USPTO”), (including Registry No. 1,550,569, registered August 1, 1989).
Respondent registered the <wwautozone.com> domain name on April 19, 2006.
That domain name is confusingly similar to Complainant’s AUTOZONE mark.
Complainant has not authorized Respondent to register or use the disputed domain name.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The resolving website contains links to the websites of Complainant’s commer-cial competitors.
Respondent benefits financially from the visits of Internet users to the links car-ried on the web site resolving from the contested domain name.
Respondent does not have any rights to or legitimate interests in the domain name <wwautozone.com>.
Respondent’s registration and use of the contested domain name is part of a years-long pattern of cyber-squatting activity.
Respondent has registered and is using the <wwautozone.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the AUTOZONE service mark for purposes of Policy
¶ 4(a)(i) by virtue of its registration of the mark with a national trademark auth-ority, the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. For-um July 12, 2006) (finding that a UDRP complainant had established rights in marks where the marks were registered with a trademark authority).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the Unites States) other than that in which Respondent resides or does business (here India). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purposes of Policy ¶ 4(a)(i) whether a UDRP complain-ant’s mark is registered in a country other than that of a respondent’s place of business).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the disputed <wwautozone.com> domain name is confusingly similar to Complainant’s AUTOZONE service mark. The domain name contains Complainant’s mark in its entirety, adding only the letters “ww” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See, for example, Victoria's Secret Stores Brand Management, Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, FA 1428763 (Nat. Arb. Forum March 22, 2012), finding that: “the <wwvictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark, because it incorporates the mark in its entirety, while adding “ww” and the . . . gTLD ’.com.’”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Complainant has not authorized Respondent to register or use the domain name <wwautozone.com>. Moreover, the WHOIS record for the disputed do-main name identifies the domain name registrant only as “LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the <wwautozone.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as contemplated by Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a UDRP com-plainant had not authorized that respondent to register a domain name contain-ing its mark).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the website resolving from the domain name contains links to the websites of Complainant’s commercial competitors and that Respondent profits from the receipt of fees owing to the visits of internet users to those links. This employ-ment of the domain name 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Therefore the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that, as alleged in the Complaint, Respond-ent has engaged in a years-long pattern of cyber-squatting, to the point that it has amassed a record of thirty-three (33) adverse UDRP decisions in which it was found to have registered and used in bad faith domain names derived from the marks of others. See, for example, Ashley Furniture Industries, Inc. v. Laksh Internet Solutions Private Limited, FA 1473309 (Nat. Arb. Forum Jan 6, 2013); Discover Financial Services v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, FA 1442161 (Nat. Arb. Forum June 21, 2012); Baylor University v. Laksh Internet Solutions Private Limited, FA 1188976 (Nat. Arb. Forum July 10, 2008). Under Policy ¶ 4(b)(ii), this pattern stands as evidence of bad faith in the registration and use of the <wwautozone.com> domain name here in issue. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(ii) where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names con-taining the trademarks of various complainants).
We are also persuaded from the evidence that Respondent registered and is us-ing the <wwautozone.com> domain name, which is confusingly similar to Com-plainant’s AUTOZONE service mark, to direct Internet users searching for Com-plainant’s website to the website resolving from that domain name for Respond-ent’s commercial gain. Under Policy ¶ 4(b)(iv), this too is proof of bad faith in the registration and use of the domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that featured links to third-party websites that offered services similar to those of a UDRP complainant).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwautozone.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 24, 2013
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