Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. ICS INC.
Claim Number: FA1312001533422
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advcanceautoparts.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013.
On December 9, 2013, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <advcanceautoparts.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 December 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2014 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@advcanceautoparts.com. Also on December 16, 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 January 9, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the ADVANCE AUTO PARTS mark in connection with auto part sales. Complainant is the second largest retailer of automotive replacements parts and accessories in the United States. Complainant maintains over 3,500 stores and employs more than 51,000 employees in the United States, Puerto Rico, and the Virgin Islands. Complainant also maintains the website <adcanceautoparts.com> from which it conducts its online business.
Complainant owns the ADVANCE AUTO PARTS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,484,796, registered April 12, 1988).
The disputed domain name <advcanceautoparts.com> is confusingly similar to the ADVANCE AUTO PARTS mark as the disputed domain name differs by a single character from the mark, and adds the generic top-level domain (“gTLD”) “.com”, which is an irrelevant addition for the purposes of Policy ¶ 4(a)(i).
Respondent has not been commonly known by the disputed domain name <advcanceautoparts.com>, nor has Complainant authorized Respondent’s use of the mark. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses <advcanceautoparts.com> to redirect users to a website that features links to companies that compete with Complainant in the auto parts field. Respondent presumably receives click-through fees from the linked websites.
Respondent’s bad faith is demonstrated by Respondent’s offer to sell the <advcanceautoparts.com> domain name. Respondent is a recalcitrant, serial typosquatter. Further, Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting. Respondent is using the <advcanceautoparts.com> disputed domain name to redirect users to a website featuring links to websites that are in direct competition with Complainant in the field of auto part sales, disrupting Complainant’s business. Such disruption is evidence of Respondent’s bad faith. Respondent uses the disputed domain name in connection with generating revenue as a “click through” website. As such, Respondent takes advantage of Complainant’s well known mark to achieve commercial gain in violation of the Policy ¶ 4(b)(iv). Respondent had actual knowledge of Complainant’s rights in the ADVANCE AUTO PARTS mark when it registered the disputed domain name, and therefore, registered the name in bad faith. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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.”).
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). It is irrelevant that Respondent may operate outside of the trademark registrant’s jurisdiction. 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) ; see also, Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <advcanceautoparts.com> domain name differs from Complainant’s trademark by the elimination of the mark’s spaces, the addition of the letter “c” 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. To the contrary, 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. Furthermore, 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)).
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 “ICS Inc.” 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 <advcanceautoparts.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 and from which Respondent likely generates 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).
Respondent’s <advcanceautoparts.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 <advcanceautoparts.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)).
Additionally and absent any other plausible explanation for registering the domain name, 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 <advcanceautoparts.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 <advcanceautoparts.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.’”).
Next, Respondent had knowledge of Complainant’s rights in the ADVANCE AUTO PARTS mark when it registered the <advcanceautoparts.com> domain name. Respondent uses the website to display content directly related to Complainant’s business in the field of auto parts and the <advcanceautoparts.com> website displays a link to one of Complainant’s competitors. Moreover, the intended form of the domain name as a typographical variant of Complainant’s trademark urges that it is inconceivable that Respondent could have come up with the domain name without knowledge of Complainant and its trademark. Therefore, Respondent’s prior knowledge of Complainant's trademark additionally shows that Respondent registered the at-domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 such destination into a web browser’s address bar or a search engine’s input field. In the instant case, the at-issue second level domain name merely has the letter “c” added to, and the spaces deleted from, Complainant’s ADVANCE AUTO PARTS mark. The typosquatter expects that some mistyped addresses will happen to match a URL that the typosquatter controls and then exploits the resulting misplaced visitors via click-through advertisements or otherwise. Notably, this case is not a unique instance of Respondent’s typosquatting activity. Indeed, the Panel notes that Respondent has registered other domain names, which are outside the purview of the instant dispute, that appear to be typosquatted versions of third party registered trademarks and many of Respondent’s domain names have been the subject of adverse UDRP decisions. Respondent’s flagrant typosquatting indicates that Respondent has a prior pattern of bad faith domain name registration as characterized in Policy ¶ 4(b)(ii). There is thus no doubt that Respondent’s purpose in registering and using the <advcanceautoparts.com>domain name was and 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advcanceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 15, 2014
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