Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Dragan Platic / Poste restante
Claim Number: FA1401001537469
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dragan Platic / Poste restante (“Respondent”), Croatia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advavceautoparts.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2014; the National Arbitration Forum received payment on January 6, 2014.
On January 8, 2014, Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <advavceautoparts.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.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 January 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@advavceautoparts.com. Also on January 13, 2014, 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 February 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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 makes the following contentions:
1. The disputed domain name is confusingly similar to a mark that Complainant owns rights in pursuant to Policy ¶ 4(a)(i).
a. Complainant is the second-largest retailer of automotive replacement parts and accessories nationwide. Complainant’s company was founded in 1929 as Advance Stores, LLC.
b. Complainant owns the ADVANCE AUTO PARTS mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267 registered January 4, 1994). See Complainant’s Exhibit E. It is irrelevant whether Complainant registered the mark in the country where Respondent operates.
c. Respondent’s <advavceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
2. Respondent has no rights or legitimate interests in the <advavceautoparts.com> domain name under Policy ¶ 4(a)(ii).
a. Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Dragan Platic” as registrant of the disputed domain name. Respondent is neither sponsored by nor affiliated with Complainant in any way.
b. The <advavceautoparts.com> domain name redirects Internet users to Complainant’s own website in violation of Complainant’s affiliate program. See Complainant’s Exhibits H & M.
3. Respondent registered and is using the <advavceautoparts.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
a. Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website, which is a direct violation of the affiliate agreement between Complainant and Respondent. See Complainant’s Exhibits H & M.
b. Respondent was aware of Complainant and its mark when Respondent registered the disputed domain name.
c. Respondent’s <advavceautoparts.com> domain name is a typosquatted version of Complainant’s ADVANCE AUTO PARTS mark.
4. Respondent registered the disputed domain name on March 16, 2007, which was after Complainant’s first use in commerce on March 3, 1984 as well as its registration with the USPTO on April 12, 1988.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on March 16, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 asserts that it owns rights in the ADVANCE AUTO PARTS mark through its registration of the mark with the USPTO (e.g., Reg. no. 1,815,267 registered January 4, 1994). See Complainant’s Exhibit E. Previous panels have held that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under the Policy. 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)). In addition, it has been previously determined that it is irrelevant whether a complainant registered the mark in the country where respondent operates. 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 holds that Complainant’s registration of its ADVANCE AUTO PARTS mark is sufficient to establish Complainant’s rights in the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i).
Complainant next asserts that the <advavceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark, because the disputed domain name takes advantage of a common typing error of Internet users trying to access goods and services under Complainant’s ADVANCE AUTO PARTS mark. Specifically, the Panel notes that the disputed domain name fully appropriates Complainant’s mark and merely replaces the letter “n” with the letter “v,” while also eliminating the spaces found between words in the mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel notes that it has previously been held that a domain name’s affixation of a gTLD and its elimination of spaces found between words in a complainant’s mark do not sufficiently vary the domain name from the complainant’s mark under Policy ¶ 4(a)(i). See, e.g., 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)). It has also been held that a domain name is confusingly similar to a complainant’s mark where the domain name merely replaces one letter found in the mark with another letter. See, e.g., Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). For the foregoing reasons, the Panel holds that the <advavceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark pursuant to 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 asserts that Respondent is not commonly known by the disputed domain name. Complainant points out that the WHOIS information lists “Dragan Platic” as registrant of the disputed domain name and that Complainant has not authorized Respondent to use its ADVANCE AUTO PARTS mark in a domain name. The Panel notes that previous panels have held that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii) where the complainant alleges that it has not authorized the respondent to use its mark and there is no evidence in the record, including the WHOIS information, to suggest that the respondent is commonly known by the disputed domain name. 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). Here, the Panel finds that the listed WHOIS name “Dragan Platic” does not suggest that Respondent is commonly known as <advavceautoparts.com>. The Panel also holds that nothing else in the record suggests that Respondent is commonly known as <advavceautoparts.com>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further suggests that the <advavceautoparts.com> domain name is not being used for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because the disputed domain name redirects Internet users to Complainant’s own website in violation of Complainant’s affiliate program. See Complainant’s Exhibits H & M. The Panel notes that a screenshot submitted by Complainant supports Complainant’s contention that the <advavceautoparts.com> domain name redirects to Complainant’s own ADVANCE AUTO PARTS website. See Complainant’s Exhibit H. The Panel further observes that Complainant has submitted a “Publisher Service Agreement,” in which affiliates of Complainant agree not to infringe on Complainant’s trademark in any way. See Complainant’s Exhibit M. The Panel thus accepts Complainant’s contention that the disputed domain name redirects to Complainant’s own website in violation of the affiliate agreement between Complainant and Respondent. The Panel notes that it has previously been held that this use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from the complainant’s commercial website, and using that domain name to redirect Internet consumers to the complainant’s website as a part of the complainant’s affiliates program is not a bona fide offering of goods or services nor a noncommercial use of the domain name); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program). Therefore, the Panel holds that Respondent’s use of the <advavceautoparts.com> domain name to redirect Internet users to Complainant’s own website is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), and that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel notes that the Policy ¶ 4(b) sets forth four circumstances that are indicative of a respondent’s bad faith registration and use of a disputed domain name. It has previously been held that these four circumstances are only examples of how a respondent can demonstrate bad faith under the policy, not an exhaustive list. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, the Panel considers the totality of the circumstances in the instant proceedings to determine whether Respondent registered and used the <advavceautoparts.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant first alleges that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s own website demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). As discussed above, Complainant has submitted evidence that suggests that the <advavceautoparts.com> domain name resolves to Complainant’s own official website, and that by signing the “Publisher Service Agreement,” Respondent agreed not to register a domain name that infringes on Complainant’s trademark rights. See Complainant’s Exhibits H & M. The Panel notes that it has previously been held that a respondent’s use of a disputed domain name to redirect to the complainant’s own site demonstrates respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”). The Panel similarly reasons that Respondent registered the <advavceautoparts.com> domain name in order to improperly profit from Complainant’s affiliate program. The Panel holds that this behavior is indicative of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Complainant next argues that as a member of Complainant’s affiliate program, Respondent must have had actual notice of Complainant’s rights in the ADVANCE AUTO PARTS mark when it registered the <advavceautoparts.com> domain name. The Panel notes that it has previously been held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Here, the Panel accepts Complainant’s contention that Respondent was a member of Complainant’s affiliate program, and thus registered the disputed domain name with actual notice of Complainant’s rights in the ADVANCE AUTO PARTS mark. The Panel concludes that Respondent’s actual notice of Complainant’s rights in the appropriated mark is further evidence that the <advavceautoparts.com> domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that the disputed domain name constitutes a typosquatted version of Complainant’s ADVANCE AUTO PARTS mark, and that Respondent’s typosquatting behavior is further evidence of Respondent’s bad faith registration and use of the <advavceautoparts.com> domain name under Policy ¶ 4(a)(iii). The Panel notes that previous panels have determined that a respondent engages in typosquatting by registering a domain name that is a simple misspelling of the complainant’s mark. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting). Here, the Panel concludes that the <advavceautoparts.com> domain name constitutes a simple misspelling of Complainant’s ADVANCE AUTO PARTS mark, because the disputed domain name merely replaces the “n” in the word “Advance” with the letter “v.” The Panel notes that previous panels have determined that a respondent’s typosquatting is demonstrative of a respondent’s bad faith registration and use under the Policy because a typosquatted domain name tends to create a likelihood of confusion with the appropriated mark. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion 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’”). Here, the Panel similarly concludes that the <advavceautoparts.com> domain name is likely to create the false impression that Respondent is associated with Complainant. Therefore, the Panel holds that Respondent demonstrated bad faith registration and use of the <advaveautoparts.com> domain name under Policy ¶ 4(a)(iii) by engaging in typosquatting.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advavceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 13, 2014
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