AutoZone Parts, Inc. and ALLDATA LLC v. Above.com Domain Privacy
Claim Number: FA1310001522850
Complainant is AutoZone Parts, Inc. and ALLDATA LLC (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com>, registered with Above.Com Pvt Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2013; the National Arbitration Forum received payment on October 4, 2013.
On October 7, 2013, Above.Com Pvt Ltd confirmed by e-mail to the National Arbitration Forum that the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names are registered with Above.Com Pvt Ltd and that Respondent is the current registrant of the names. Above.Com Pvt Ltd has verified that Respondent is bound by the Above.Com Pvt 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 October 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@autolzone.com, postmaster@autoxzone.com, postmaster@autopzone.com, postmaster@autozoneazpeople.com, postmaster@motoralldatapro.com, and postmaster@autocarszone.com. Also on October 22, 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 November 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. There is no indicated that the registrant of the domain names is commonly known by any of the at-issue domain names.
ii. Respondent is using the domain names to host webpages that display links to Complainant’s direct competitors.
iii. The domain names <autolzone.com>, <autoxzone.com>, and <autopzone.com> are clearly typosquatted versions of the AUTOZONE mark.
i. Respondent offered to sell the domain names to Complainant for $500 each (and, in the case of <autozoneazpeople.com>, for $900).
ii. The underlying registrant of the domain names appears to have been the respondent in over 150 UDRP decisions.
iii. Respondent is using the domain names to host links to third-party businesses, including to direct competitors of Complainant.
iv. The domain names <autolzone.com>, <autoxzone.com>, and <autopzone.com> are clearly typosquatted versions of the AUTOZONE mark.
B. Respondent has not submitted a Response to this case.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding.
1. Respondent’s <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names are confusingly similar to Complainant’s ALLDATA LLC mark.
2. Respondent does not have any rights or legitimate interests in the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names.
3. Respondent registered or used the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names 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.
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 contends that it is one of the world’s largest retailers of automotive parts and accessories and is the leading provider of automotive repair information and solutions to the professional automotive service industry. Complainant is the owner of trademark registrations with the USPTO for the AUTOZONE mark (e.g., Reg. No. 1,496,638, registered July 19, 1988) and for the ALLDATA mark (e.g., Reg. No. 1,556,655, registered September 19, 1989). See Exhibits F, H. The Panel finds that although Respondent appears to reside in Australia, Policy ¶ 4(a)(i) does not require that Complainant register its marks in the jurisdiction in which Respondent resides, so long as it establishes its rights in the marks in some jurisdiction. See 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). Accordingly, the Panel concludes that Complainant has sufficiently established its rights in the AUTOZONE and ALLDATA marks under Policy ¶ 4(a)(i) through its registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s domain names <autolzone.com>, <autoxzone.com>, and <autopzone.com> all feature the AUTOZONE mark in full, with only one letter added to the middle of the mark. The Panel holds that Respondent’s addition of an extra letter to Complainant’s mark in the domain names is irrelevant 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)). Complainant contends that Respondent’s domain names <autozoneazpeople.com> and <autocarszone.com> also feature the AUTOZONE mark in full and the addition of the generic term “people” or “cars.” The Panel finds that Respondent’s addition of generic terms does not differentiate the domain names from the mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel observes that Respondent adds the geographical term “az” to the <autozoneazpeople.com> domain name, which is a geographical descriptor for “Arizona.” The Panel determines that Respondent’s addition of a geographical term to Complainant’s mark in a domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Lastly, the Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, and <autocarszone.com> domain names. The Panel finds that Respondent’s inclusion of a gTLD does not distinguish the domain names from Complainant’s AUTOZONE mark under Policy ¶ 4(a)(i). Consequently, the Panel finds that Respondent’s <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, and <autocarszone.com> domain names are confusing similar to Complainant’s AUTOZONE mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s domain name <motoralldatapro.com> features the ALLDATA mark in full and adds the generic terms “motor” and “pro.” The Panel holds that Respondent’s inclusion of generic terms does not negate a Panel from finding confusing similarity under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel observes that Respondent also includes the gTLD “.com” in its <motoralldatapro.com> domain name. In Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007), the panel held that “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 therefore finds that Respondent’s addition of a gTLD to Complainant’s mark in a domain name is irrelevant pursuant to Policy ¶ 4(a)(i). Thus, the Panel concludes that Respondent’s <motoralldatapro.com> domain name is confusingly similar to Complainant’s ALLDATA mark under Policy ¶ 4(a)(i).
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 argues that there is no indication that the registrant of the domain names is commonly known by any of the at-issue domain names. Complainant contends that Respondent has no connection or affiliation with Complainant, nor has it at any time received from either company a license or consent, express or implied, to use the AUTOZONE or ALLDATA marks in a domain name or in any other manner. Complainant argues that the WHOIS record for each domain name shows the registrant to be “Above.com Domain Privacy.” See Exhibit C. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel determines that Respondent is not commonly known by the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, or <autocarszone.com> domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names to host webpages that display links to Complainant’s direct competitors. The Panel observes that Respondent uses its disputed domain names to provide competing links titled “Car & Truck Accessories,” “Discount Auto Parts,” “Autozone Auto Parts,” and other links to other competitors. See Exhibits P through Z. Complainant claims that Respondent presumably earns income when visitors to the disputed domain names click on these links. The Panel thus determines that Respondent is not using the disputed domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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).”).
Complainant asserts that Respondent’s domain names <autolzone.com>, <autoxzone.com>, and <autopzone.com> are clearly typosquatted versions of the AUTOZONE mark. The Panel notes that Respondent only adds extra letters to Complainant’s AUTOZONE mark in its <autolzone.com>, <autoxzone.com>, and <autopzone.com> domain names. Complainant alleges that typosquatting indicates an intent to divert traffic to one’s domain names via typographical errors made by Internet users. Accordingly, the Panel determines that Respondent has engaged in the typosquatting of the <autolzone.com>, <autoxzone.com>, and <autopzone.com> domain names, showing that Respondent has no rights or legitimate interests in the domain names 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).”).
Complainant alleges that the registrant has offered to sell the domain names to Complainant for $500 each (and, in the case of <autozoneazpeople.com>, for $900). See Exhibit O. Complainant contends that these numbers are well in excess of the costs a registrant would have incurred to register and renew a domain name for three years, the longest period of time Respondent has owned any of the domain names. The Panel observes that the WHOIS record for the disputed domain names states “Want to buy this domain? Get it with our Domain Buy service.” See Exhibit C. In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), the panel found that respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. Accordingly, the Panel holds that Respondent’s offer to sell the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names for costs excess of out-of-pocket costs demonstrates bad faith use and registration under Policy ¶ 4(b)(i).
Complainant asserts that the underlying registrant of the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names, “Above.com Domain Privacy,” appears to have been the Respondent in over 150 UDRP decisions. The Panel notes that although Complainant fails to provide evidence of Respondent’s prior UDRP proceedings, the Panel finds that Respondent’s prior UDRP proceedings resulted in findings of bad faith and transfer, and finds that this evidences bad faith use and 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)).
Complainant contends that Respondent is using the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names to host links to third-party businesses, including to direct competitors of Complainant. The Panel observes that Respondent uses its disputed domain names to provide competing links titled “Car & Truck Accessories,” “Discount Auto Parts,” “Autozone Auto Parts,” and other links to other competitors. See Exhibits P through Z. Complainant alleges that Respondent presumably profits when visitors to the domain names click on these links. Prior panels have held that a respondent’s use of domain names to provide competing links for which it commercially benefits evidences bad faith use and registration under 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.’”). Therefore, the Panel finds that Respondent registered and is using the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that the domain names <autolzone.com>, <autoxzone.com>, and <autopzone.com> are clearly typosquatted versions of the AUTOZONE mark. Complainant argues that Respondent’s domain names <autolzone.com>, <autoxzone.com>, and <autopzone.com> all feature the AUTOZONE mark in full, with only one letter added to the middle of the mark. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel found that “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).” Thus, the Panel finds that Respondent has engaged in the typosquatting of the Complainant’s mark in its <autolzone.com>, <autoxzone.com>, and <autopzone.com> domain names, showing bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autolzone.com>, <autoxzone.com>, <autopzone.com>, <autozoneazpeople.com>, <motoralldatapro.com>, and <autocarszone.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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