ALLDATA LLC v. ICS INC.
Claim Number: FA1308001515642
Complainant is ALLDATA LLC (“Complainant”), represented by Suzanne Werner of Alston & Bird LLP, Georgia, United States. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alldataiy.com> and <alldatapros.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2013; the National Arbitration Forum received payment on August 20, 2013.
On August 21, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <alldataiy.com> and <alldatapros.com> domain names are registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@alldataiy.com, postmaster@alldatapros.com. Also on August 23, 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 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
Respondent registered both of the disputed domain names on August 24, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 alleges that it owns rights in its ALLDATA mark through registrations with the USPTO (e.g., Reg. No. 1,556,655, registered September 19, 1989). Previous panels have determined that a complainant’s registration of a mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Previous panels have also held that a complainant need not register its mark in the respondent’s country of residence in order to establish its rights in the mark under the Policy. See, e.g., Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel determines that Complainant is the owner of the ALLDATA mark through its registrations with the USPTO, and holds that Complainant has rights in the mark under Policy ¶ 4(a)(i), even though Respondent appears to operate out of the Cayman Islands.
Complainant next alleges that Respondent’s <alldataiy.com> and <alldatapros.com> domain names are confusingly similar to its ALLDATA mark. Complainant argues that the <alldataiy.com> domain name is confusingly similar to its ALLDATA mark, because the domain name fully incorporates the mark and merely adds the term “iy,” a common misspelling of the “DIY” term that is associated with Complainant’s business. Similarly, Complainant argues that the <alldatapros.com> domain name fully incorporates Complainant’s ALLDATA mark and merely adds the term “pros.” Complainant points out that the added term “pros” is a common misspelling of the word “pro,” which Complainant uses in connection with its ALLDATA Repair software and information product. The Panel notes that both of the disputed domain names add the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD such as “.com” is irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). 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). A previous panel held that “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i). Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004). Previous panels have similarly held that a domain name’s addition of a “string of indiscriminate letters” to a mark does not differentiate the domain name from the mark pursuant to the Policy. Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel finds that the added terms “iy” and “pros” are generic or descriptive terms and holds that the addition of these terms does not distinguish the disputed domain names from Complainant’s ALLDATA mark. The Panel determines that the <alldataiy.com> domain name’s added “iy” does not constitute a generic or descriptive term, but does constitute a string of indiscriminate letters. The Panel holds that the addition of this string of letters does not sufficiently distinguish the <alldataiy.com> domain name from the ALLDATA mark. For the foregoing reasons, the Panel holds that both of the disputed domain names are confusingly similar to Complainant’s ALLDATA mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant suggests that Respondent is not commonly known by either the <alldataiy.com> domain name or the <alldatapros.com> domain name. Complainant further alleges that it has not authorized Respondent to use its ALLDATA mark in a domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), a previous panel concluded that the respondent was not commonly known by the disputed 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. The Panel notes that as in Reese, supra, Complainant has asserted that it has not authorized or licensed Respondent’s use of the ALLDATA mark. The Panel notes that the WHOIS information identifies the registrant of the disputed domain names as “ICS INC,” which tends to suggest Respondent is known by that name and not by the names of <alldataiy.com> or <alldatapros.com>. Therefore, the Panel reasonably holds that Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because both disputed domain names resolve to websites that display links to numerous third party websites, some of which directly compete with Complainant in the automotive parts industry. Specifically, Complainant alleges that the websites resolving from both the <alldataiy.com> and <alldatapros.com> domain names resolve to websites that display a series of advertisements under the headings of “Sponsored Listings” and “Related Searches,” including links entitled “Auto Repair Manuals” and “Cheap Transmission Repair.” See id. Previous panels have held that a respondent’s use of a disputed domain name to promote hyperlinks that are related or unrelated to the complainant’s business is not protected under Policy ¶¶ 4(c)(i) or (iii). See, e.g., 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”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Here, Complainant has provided evidence that the disputed domain names resolve to websites that promote hyperlinks to a variety of both competing and unrelated third-party websites. Therefore, the Panel holds that this use of the <alldataiy.com> and <alldatapros.com> domain names is not protected under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proven this element.
Complainant alleges that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(i), because the disputed domain names are for sale to the general public at prices exceeding Respondent’s out-of-pocket costs. Specifically, Complainant alleges that the <alldatapros.com> domain name is on sale at the BuyDomains website for a price of $250, and the <alldataiy.com> is on sale at the BuyDomains website for a price of $1,439. Previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(b)(i) when it offers to sell a disputed domain name for valuable consideration in excess of its own out-of-pocket expenses. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). In the instant proceeding, Complainant has provided evidence that Respondent has offered to sell the disputed domain names through the BuyDomains website. Therefore, the Panel determines that the listed prices of $250 and $1,439 are greater than Respondent’s out-of-pocket costs of registering the disputed domain names and holds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(i).
Complainant next argues that Respondent has engaged in a pattern of bad faith registration of domain names, which evidences Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(ii). Specifically, Complainant contends that Respondent has demonstrated a pattern of bad faith insofar as there are seventy-nine adverse UDRP proceedings that have found against Respondent. Previous panels have held that proof of prior UDRP proceedings finding against a respondent sufficiently establishes the respondent’s pattern of bad faith registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). In the instant proceeding, Complainant has presented evidence to suggest that seventy-nine adverse UDRP proceedings have ruled against Respondent, which is more than the forty-one prior UDRP rulings in Azar Int’l, supra. Accordingly, the Panel determines that Respondent has demonstrated a pattern of bad faith registration, which is evidence of Respondent’s bad faith registration and use of the <alldataiy.com> and <alldatapros.com> domain names in the instant proceeding pursuant to Policy ¶ 4(b)(ii).
Complainant further alleges that Respondent has demonstrated bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). Complainant argues that Respondent registered the <alldataiy.com> and <alldatapros.com> domain names in order to mislead Internet users seeking goods and services under Complainant’s ALLDATA mark, since both of the disputed domain names fully incorporate the mark and merely add common misspellings of words associated with Complainant’s automotive repair business. Complainant further argues that, because the disputed domain names resolve to websites that promote links to third-party websites, including websites of Complainant’s competitors, Respondent is presumably commercially benefitting from its registration and use of the disputed domain names in the form of click-through fees. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), a previous panel held that the respondent’s use of the disputed domain name to promote links to the complainant’s competitors was evidence of bad faith under Policy ¶ 4(b)(iv) because the respondent “presumably commercially benefitted from the misleading domain name by receiving ‘click-through fees.’” The Panel finds that the disputed domain names are misleading to Internet users seeking products under Complainant’s ALLDATA mark. The Panel finds that Complainant has provided evidence that both the <alldataiy.com> and <alldatapros.com> domain names promote links to Complainant’s competitors in the automotive repair industry, including links entitled “Auto Repair Manuals” and “Cheap Transmission Repair.” See id. In accordance with Associated Newspapers, supra, the Panel finds that Respondent is commercially benefitting from its promotion of these links. For the foregoing reasons, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant suggests that Respondent has engaged in typosquatting, because the <alldataiy.com> is a common misspelling of Complainant’s ALLDATA mark. Complainant alleges that Respondent’s typosquatting behavior is itself evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). The Panel notes the previous case of Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), in which a previous panel found that the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusing with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting.’” The Panel finds that by registering the <alldataiy.com> domain name, which differs from Complainant’s registered ALLDATA mark by just two characters, Respondent deliberately created a likelihood that the website resolving from its <alldataiy.com> domain name would be confused for being a website sponsored by or affiliated with Complainant. Therefore, the Panel holds that Respondent registered and used the disputed <alldataiy.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <alldataiy.com> and <alldatapros.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 18, 2013
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