AutoZone Parts, Inc. v. Mohamad Fouani
Claim Number: FA1406001565308
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is Mohamad Fouani (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationwideautozone.com>, registered with ENOM, INC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2014; the National Arbitration Forum received payment on June 18, 2014.
On June 19, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <nationwideautozone.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 June 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@nationwideautozone.com. Also on June 19, 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 July 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <nationwideautozone.com> domain name is confusingly similar to Complainant’s AUTO ZONE mark.
2. Respondent does not have any rights or legitimate interests in the <nationwideautozone.com> domain name.
3. Respondent registered and uses the <nationwideautozone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its AUTOZONE mark to promote the sale of automotive parts and accessories, and also conducts business using its autozone.com domain name. Complainant holds a trademark registrations for its AUTOZONE mark with the United States Patent and Trademark Office ("USPTO"), (e.g., Reg. No. 1,550,569 registered Aug. 1, 1989), and also for AUTOZONE.COM (e.g., Reg. No. 2,449,353 registered May 8, 2001).
Respondent registered the <nationwideautozone.com> domain name on registered August 17, 2008, and uses it purporting to offer a brick-and-mortar retail operation called “Nation Wide Auto Zone.”
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 Panel finds that Complainant’s USPTO registrations for its AUTOZONE and AUTOZONE.COM marks are sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in those marks. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <nationwideautozone.com> domain name incorporates Complainant’s AUTOZONE.COM mark and merely adds the generic phrase “nationwide,” which does not distinguish the domain name. The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 Respondent is not known by the <nationwideautozone.com> domain name, nor has Complainant authorized Respondent to use AUTOZONE.COM in a domain name. The WHOIS information lists “MOHAMAD FOUANI” as the registrant of record for this domain name. In LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013), the panel did not find for the respondent under Policy ¶ 4(c)(ii) when no evidence in the record tied the respondent’s name with the domain name. The Panel likewise finds that Respondent is commonly known by the <nationwideautozone.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the <nationwideautozone.com> domain name purporting to offer a brick-and-mortar retail operation called “Nation Wide Auto Zone,” with only a single item listed on the domain name’s website since it was first used. The Panel note the website resolving form the disputed domain name features one product along with various website navigation tools. The Panel finds that this use is not bona fide under Policy ¶ 4(c)(i), and is not a legitimate noncommercial or fair under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent unfairly benefits from the confusion caused when Internet users associate the website at <nationwideautozone.com> with Complainant. The Panel agrees and finds Policy ¶ 4(b)(iv) bad faith because Respondent is offering products for sale through use of the confusingly similar domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel notes that Respondent is marketing its business using “NATION WIDE AUTO ZONE,” which appears on the website resolving from the disputed domain name. This is tantamount to passing itself off as Complainant, which constitutes Policy ¶ 4(a)(iii) bad faith. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds that 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 <nationwideautozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 22, 2014
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