national arbitration forum

 

DECISION

 

Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Douglas Baxster

Claim Number: FA1308001513705

 

PARTIES

Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Douglas Baxster (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <advaceautoparts.com>, registered with FABULOUS.COM PTY LTD.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.

 

On August 8, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <advaceautoparts.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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@advaceautoparts.com.  Also on August 15, 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 September 10, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant is the second-largest retailer of automotive replacement parts and accessories in the country, with over 3,5000 brick and mortar stores and a staff of more than 51,000 employees.

 

Complainant has registered the ADVANCE AUTO PARTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267 registered January 4, 1994). Respondent’s <advaceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.

 

Respondent is not commonly known by the <advaceautoparts.com> domain name. Respondent had no intellectual property rights in the domain name at the time it registered the domain. Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent uses the disputed domain name to redirect visitors to a website featuring third-party hyperlinks, some of which compete with Complainant’s business, from which Respondent generates a commercial gain.

 

Respondent has registered other domain names that appear to be typosquatted versions of other registered marks.  Respondent’s disruption of Complainant’s business through the display of links to Complainant’s competitors demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii). Respondent registered and uses the <advaceautoparts.com> domain name in bad faith by attempting to attract and mislead consumers for Respondent’s own profit. Respondent has engaged in typosquatting behavior which is, in and of itself, evidence of bad faith.

Respondent did not submit a response to this proceeding.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns USPTO registered trademarks for ADVANCE AUTO PARTS.

 

Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the ADVANCE AUTO PARTS mark.

 

Respondent is a serial typosquatter.

 

Respondent uses the at-issue domain name to redirect visitors to a website featuring third-party hyperlinks, some of which compete with Complainant’s business, from which Respondent generates a commercial gain.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s registration of its ADVANCE AUTO PARTS mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

The <advaceautoparts.com> domain name differs from Complainant’s trademark by the elimination of the mark’s spaces, the removal of the letter “n” in its first term, and the appending of the top level domain name, “.com,” thereto. These trivial modifications to Complainant’s trademark are insufficient to differentiate the domains name from Complainant’s mark for the purposes of the Policy. Rather, the slight alterations are designed to make the domain name sufficiently similar to Complainant’s trademark so that Internet users who inadvertently mistyping Complainant’s trademark may instead type the at-issue domain name. Further, it is well settled that the addition of the top level domain name “.com” is wholly irrelevant to the Panel’s analysis under Policy ¶ 4(a)(i) . Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s trademark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name is confusingly similar to a mark when it differs by merely a single character); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 names.

 

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 an 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.

 

The WHOIS information for the at-issue domain names identifies the domain name’s registrant as “Douglas Baxster” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the domain names. The Panel therefore concludes that Respondent is not commonly known by the <advaceautoparts.com> domain names 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 at-issue domain name).

 

Respondent uses the at-issue domain name to redirect visitors to a website featuring third-party hyperlinks, some of which compete with Complainant’s business, from which Respondent generates a commercial gain. Using the domain name in this manner is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (holding that given the respondent’s failure to offer any goods or services on its website other than links to a variety of third-party websites, the respondent had not used the disputed 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)).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

Respondent’s <advaceautoparts.com> domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith with regard to the domain  name.

 

Respondent’s <advaceautoparts.com> website displays links to Complainant’s competitors thereby disrupting Complainant’s business. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant Policy ¶ 4(b)(iii).See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (finding that a respondent’s registration of a domain name used to resolve to a parking website which provides click-through revenue to respondent by displaying pay-per-click links to travel-related products and services that directly compete with Complainant’s business illustrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii)).

 

Furthermore, absent any other plausible explanation, it is evident that Respondent registered the confusingly similar domain name so that it might collect click-through revenues each time a visitor to the <advaceautoparts.com> website clicks one of its hyperlinks. It is also evident that Respondent intentionally registered the confusingly similar domain name to capitalize on website traffic from those Internet users under the false perception that Complainant sponsors or endorses the <advaceautoparts.com> website. Such use of the domain name demonstrates that Respondent registered and uses the domain name in bad faith pursuant to 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 and importantly, Respondent is typosquatting. Typosquatting is a form of cybersquatting that relies on typographical errors made when an Internet user mistypes or misspells an intended destination when entering into a web browser’s address bar or search engine’s input field. The typosquatter expects that some mistyped addresses will happen to match a URL that the typosquatted controls and then exploits the unintended visitors via click-through advertisements or otherwise. In the instant case, the at-issue domain name only lacks the “N” and spaces found in Complainant’s ADVANCE AUTO PARTS mark. There is thus no doubt that Respondent’s purpose in registering and using the <advaceautoparts.com> domain name is to typosquat on Complainant’s trademark. Typosquatting, in and of itself, shows bad faith under Policy ¶4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).  The Panel also notes that Respondent has registered other domain names, which are outside the purview of this dispute, that appear to be typosquatted versions of third party registered trademarks. Such additional typosquatting indicates that Respondent has a prior pattern of bad faith domain name registration as characterized in Policy ¶ 4(b)(ii) and suggests Respondent’s bad faith registration and use in the instant case.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <advaceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  September 11, 2013

 

 

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