AutoZone Parts, Inc. v. Anjana Madaan
Claim Number: FA1309001518729
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA. Respondent is Anjana Madaan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e‑autozone.com>, registered with GODADDY.COM, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 10, 2013, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <e‑autozone.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2013 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@e‑autozone.com. Also on September 11, 2013, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on September 30, 2013.
A timely Additional Submission was received from Complainant on October 4, 2013, in accordance with the Forum’s Supplemental Rule 7.
On October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the largest retailer of automotive parts and accessories in the United States. Through licensed affiliates, it owns and operates more than 5,000 AUTOZONE branded retail stores in North, Central, and South America. Complainant also sells automotive parts and accessories through its website, <autozone.com>, operated under the service mark AUTOZONE.COM, which recorded more than 91 million unique visitors in fiscal year 2012.
Complainant has used its AUTOZONE mark since at least 1987, and holds numerous U.S. trademark registrations for AUTOZONE, AUTOZONE.COM, and related marks.
The disputed domain name, <e‑autozone.com>, was registered by Respondent on March 3, 2012. Complainant alleges that the disputed domain name has been used solely as the address of a website consisting of links to third-party businesses. Although Respondent claims to be located in India, the website consists exclusively of links to businesses located in the United States, including many of Complainant’s direct competitors.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s marks, and that the addition of the prefix “e‑” does not diminish this similarity. Complainant further contends that Respondent was on notice of Complainant’s exclusive trademark rights by virtue of its trademark registrations and the overall fame of its marks. Complainant states that it has not authorized Respondent to use its marks, and alleges based upon these facts that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant further asserts that “it is inconceivable that that Respondent could have registered the Domain Name without knowledge of AutoZone’s rights in its mark.” Complainant asserts that Respondent selected the domain name to benefit from consumer confusion with Complainant’s marks, and that Respondent is profiting from the use of the domain name for a website containing links to Complainant’s competitors. Based upon these claims, Complainant contends that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent
states that she is a long-time resident and citizen of India who works with
local auto accessory shops in India and registered the disputed domain name in order
to use it for a related e‑commerce offering.
Respondent states that at the time of registration she was unaware of Complainant’s website, and asserts that Complainant has no registered office in India and does not sell any products to Indian customers through its website.
Respondent denies that any confusion will result from her intended use of the disputed domain, which will be limited to purchases by Indian consumers to be shipped within India. She contends that “auto zone” is a generic term for a place that sells products or services related to automobiles.
Respondent disclaims responsibility for the website to which the domain name currently resolves. She states that the domain name is currently parked with the registrar, GoDaddy.in, and it is not live. She states further that she has no control over the content that may be displayed by the registrar when users land on the parked site, and that if any money is earned from advertisements on that site, she does not receive any part of it.
Respondent claims to have rights or legitimate interests in the domain name arising from its intended future use, and denies that the domain name was registered or has been used in bad faith. Respondent accuses Complainant of attempting to reverse hijack the domain name, apparently based upon false and unsubstantiated claims in the Complaint, including the accusations regarding the parked page.
C. Additional Submissions
Consideration of Additional Submissions is warranted only in exceptional circumstances, such as where they are necessary to inform the Panel of newly discovered evidence not previously available or of arguments made by the opposing party that could not reasonably have been anticipated. See, e.g., Civic Non-Partisan Ass'n v. Ken Charko, FA 1489087 (Nat Arb. Forum May 20, 2013); see also America Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006).
Rather than limiting itself to such matters, however, Complainant’s Additional Submission replies to each and every argument made in the Response, with no clear indication of which items might warrant particular attention by the Panel. Nor does Complainant make any claim that exceptional circumstances are present that would warrant consideration of additional material. The Panel, therefore, declines to exercise its discretion to consider Complainant’s Additional Submission.
The Panel finds that the disputed domain name <e‑autozone.com> is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights and legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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.
The disputed domain name consists of Complainant’s AUTOZONE.COM trademark, with the prefix “e‑” appended thereto. This generic addition does not significantly distinguish the domain name from the mark, and the Panel finds that the domain name is confusingly similar to Complainant’s mark for purposes of paragraph 4(a)(i) of the Policy.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Paragraph 4(c)(i) of the Policy provides that rights or legitimate interests may be demonstrated by demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
Complainant’s allegations and supporting evidence suffice to meet its prima facie burden. Respondent asserts that she intends to use the domain name for an e‑commerce business relating to automotive parts, but has submitted no evidence to substantiate this claim. The Panel therefore finds that Complainant has satisfied its burden of proof on this issue.
Complainant asserts that Respondent is profiting from the use of the domain name for a website containing links to Complainant’s competitors, and that this is indicative of bad faith under paragraph 4(b)(iv) of the Policy. Respondent explains that the website in question is actually a placeholder or “parked” page served by the Registrar, and that Respondent has no connection with the content of that page.
The content of a website to which a domain name resolves is normally attributed to the registrant of the domain name for purposes of assessing bad faith under the Policy, even where control over the website has been delegated to a third party. See, e.g., Novartis AG v. Fresh Look Consulting, LLC, FA 1413477 (Nat. Arb. Forum Dec. 6, 2011). Yet the website in question here is obviously a placeholder page generated by the registrar, and there is no indication that Respondent is profiting in any way from links contained therein. Furthermore, the links on that page appear to be generated dynamically, based at least in part on the user’s location. Under these circumstances, it seems inappropriate to infer bad faith intent on Respondent’s part based upon the content of the registrar’s placeholder page, at least in the view of this Panel.
Complainant argues further that bad faith should be inferred from generally from the circumstances of the case, including the fame of Complainant’s mark and the correspondence between the disputed domain name and the mark. Complainant characterizes as “inconceivable” the notion that Respondent could have registered the domain name without knowledge of Complainant’s mark, and accuses Respondent of having selected the domain name in order to benefit from consumer confusion.
Although Complainant does not appear to have a significant presence in India, the Panel agrees it is quite unlikely that Complainant would have planned an e‑commerce auto parts venture and registered the domain name <e‑autozone.com> without knowing of Complainant’s internationally famous AUTOZONE and AUTOZONE.COM marks or its website at <autozone.com>. The Panel also considers it more likely than not that Respondent intended to profit improperly from the domain name, if not by using it for a website containing advertising links, then perhaps by seeking to sell the domain name to Complainant or a competitor thereof. The Panel is fortified in this view by the utter lack of evidence offered by Respondent to substantiate its claimed intentions regarding the disputed domain name, even though it has held the domain name registration for well over a year.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-autozone.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 4, 2013
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