Advance Auto Parts, Inc. D/B/A Advance Auto Innovations, LLC v. Jasper Yiparinavich
Claim Number: FA1312001536010
Complainant is Advance Auto Parts, Inc. D/B/A Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jasper Yiparinavich (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adavanceautoparts.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2013; the National Arbitration Forum received payment on December 23, 2013.
On December 29, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <adavanceautoparts.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 December 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 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@adavanceautoparts.com. Also on December 30, 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 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant is the second-largest retailer of automotive replacement parts and accessories in the United States, with over 3,500 brick and mortar stores and a staff of more than 51,000 employees. Complainant also operates online at <advanceautoparts.com>, which averages over two million unique visitors per month.
b. 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).
c. The <adavanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark, the domain name differs by introducing a single character into the mark along with the addition of the generic top-level domain.
d. Respondent has not been commonly known by the <adavanceautoparts.com> domain name.
e. At the time Respondent registered the disputed domain name, it had no trademark or intellectual property rights in that name.
f. The WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant.
g. Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant's mark in a domain name.
h. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites.
i. Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant.
j. Respondent uses the disputed domain’s resolving website in connection with generating revenue as a "click through" website, by using Complainant's registered trademark and providing links to the same type of services and products offered by Complainant to take advantage of Complainant's well-known mark to achieve a wrongful competitive advantage and commercial gain.
k. Respondent has engaged in typosquatting behavior which is, in and of itself, evidence of bad faith.
l. Respondent registered the <adavanceautoparts.com> domain name on November 18, 2003.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ADVANCE AUTO PARTS mark. Respondent’s domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <adavanceautoparts.com> domain name, and that Respondent registered and uses the domain name 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 is a retailer of automotive replacement parts and accessories in the United States, with over 3,500 brick and mortar stores and a staff of more than 51,000 employees. Complainant also operates online at <advanceautoparts.com>, which averages over two million unique visitors per month. Complainant registered the ADVANCE AUTO PARTS mark with the USPTO (e.g., Reg. No. 1,815,267 registered January 4, 1994). Such registration confers rights under Policy ¶ 4(a)(i), as it is irrelevant for the purposes of the Policy whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has established rights in the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i), regardless of the fact that Respondent appears to reside in Germany. 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 contends that the <adavanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. The disputed domain name replicates Complainant’s mark, with the addition of an extra “a” and the generic top-level domain (“gTLD”) “.com” as well as the removal of spaces between words in the mark. Spaces and gTLDs do not affect an analysis of confusing similarity. See 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)). The addition of a single letter to a mark does not distinguish a domain name under the Policy. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s <adavanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant maintains that Respondent has not been commonly known by the <adavanceautoparts.com> domain name. Complainant asserts that at the time Respondent registered the disputed domain name, Respondent had no trademark or intellectual property rights in that name. Complainant also asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant's mark in a domain name. Finally, the WHOIS information identifies Respondent as “Jasper Yiparinavich,” which shows no connection to Complainant, the ADVANCE AUTO PARTS mark, or the <adavanceautoparts.com> domain name. Based on the uncontradicted evidence in the record, the Panel determines that Respondent
is not commonly known by the <adavanceautoparts.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> 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).
According to Complainant, Respondent is not using the <adavanceautoparts.com> domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). Instead, Complainant claims Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Complainant presumes that Respondent receives pay-per-click fees from these linked websites. The panel in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) explained that a respondent’s use of disputed domain names to resolve to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under the complainant’s mark, was not a use that qualified as a bona fide offering of goods or services or a legitimate noncommercial or fair use. This Panel similarly finds that Respondent’s use of the <adavanceautoparts.com> domain name does not present a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <adavanceautoparts.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by diverting potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Complainant adds that the pay-per-click links displayed on Respondent’s resolving website promote products that compete with Complainant and its business under the ADVANCE AUTO PARTS mark. The disputed domain name’s website features hyperlinks to businesses such as “Pep Boys” and “TireRack.” Registration and use of a confusingly similar domain name for the purpose of advertising competitive goods or services evidences bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel agrees that Respondent’s registration and use of the <adavanceautoparts.com> domain name evidences bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent registered and uses the <adavanceautoparts.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by using the domain to attract and mislead consumers for its own profit. According to Complainant, Respondent uses the disputed domain’s resolving website in connection with generating revenue as a "click through" website, by using Complainant's registered trademark and providing links to the same type of services and products offered by Complainant to take advantage of Complainant's well-known mark and to achieve a wrongful competitive advantage and commercial gain. The Panel agrees that Respondent intentionally registered a domain name confusingly similar to Complainant’s ADVANCE AUTO PARTS mark for the purpose of generating an economic gain by creating confusion as to Respondent’s affiliation with Complainant or its mark, and therefore holds that Respondent registered and uses the <adavanceautoparts.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant finally contends that Respondent has engaged in typosquatting behavior which is, in and of itself, evidence of bad faith. Aside from the requisite gTLD and spacing changes, the disputed domain name differs from Complainant’s mark by a single letter “a.” Similar changes to a mark have been found to constitute typosquatting. 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.”). Because the Panel agrees that the <adavanceautoparts.com> domain name represents a typosquatted version of Complainant’s ADVANCE AUTO PARTS mark, the Panel finds bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <adavanceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 7, 2014
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