Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Aizhenhua / Aizhenhua
Claim Number: FA1407001572872
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Aizhenhua / Aizhenhua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dvanceautoparts.com>, registered with eName Technology Co.,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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014. The Complaint was submitted in both English and Chinese.
On August 3, 2014, eName Technology Co.,Ltd. confirmed by e-mail to the National Arbitration Forum that the <dvanceautoparts.com> domain name is registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the name. eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology Co.,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 August 11, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 2, 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@dvanceautoparts.com. Also on August 11, 2014, the Chinese language 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 September 10, 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 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). Complainant uses the mark for retail auto part stores and associated services. The <dvanceautoparts.com> domain name is confusingly similar to the ADVANCE AUTO PARTS mark.
Respondent has no rights in the disputed domain name for three reasons. First, Respondent is not commonly known by the disputed domain name per the WHOIS record. Second, Respondent is not affiliated with Complainant in anyway. Third, the disputed domain name is not used in connection with a bona fide use or a legitimate noncommercial or fair use. The domain name resolves to promote links to third-parties, some of which compete with Complainant.
Respondent is using and registered the disputed domain name in bad faith. The disputed domain name resolves to a page promoting links that compete with Complainant in field of auto parts and related services. Further, the domain name is used in connection with click-through fees from which Respondent can generic profit after misleading Internet users to the disputed landing page by creating the impression of Complainant affiliation. In addition, Respondent has engaged in typosquatting.
B. Respondent
Respondent has failed to submit a response in this proceeding. The Panel notes that the disputed domain name was registered on October 25, 2011.
Complainant established that it had rights in the mark contained in the disputed domain name. 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.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
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 uses the ADVANCE AUTO PARTS mark for retail auto part stores and associated services. To demonstrate Policy ¶ 4(a)(i) rights in the ADVANCE AUTO PARTS mark, Complainant cites to its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267, registered January 4, 1994). The Panel agrees that Complainant’s USPTO registrations are sufficient to establish Complainant’s rights in the ADVANCE AUTO PARTS mark pursuant to Policy ¶ 4(a)(i). 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).
Complainant argues that the <dvanceautoparts.com> domain name is confusingly similar to the ADVANCE AUTO PARTS mark. Complainant notes that the name deviates from the mark by the mere misspelling of the mark, namely the deletion of the letter “a” from ADVANCE. The Panel also notes that the domain name eliminates the spacing from the mark and adds the generic top-level domain (“gTLD”) “.com.” Prior panels have held that such alterations are insufficient to negate the confusing effect of domain names comprised of another’s mark. For example, in The Gap, Inc. v. Hanying Li, FA 1331209 (Nat. Arb. Forum July 29, 2010), the panel determined that the <oldavy.com> domain name was confusingly similar to the OLD NAVY mark despite the deletion of a letter from the mark, the elimination of spacing, and the addition of a gTLD. Accordingly, the Panel finds the <dvanceautoparts.com> domain name confusingly similar to the ADVANCE AUTO PARTS mark pursuant to Policy ¶ 4(a)(i) as the alterations to the mark are insufficient to distinguish the name from the incorporated mark.
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 contends that Respondent has no rights in the disputed domain name. In so arguing, Complainant notes first that Respondent is not commonly known by the disputed domain name per the WHOIS record. Second, Complainant urges that Respondent is not affiliated with Complainant in anyway. The Panel notes that the WHOIS information identifies “Aizhenhua / Aizhenhua” as the registrant of record. The Panel notes that Respondent did not submit a response to rebut any of Complainant’s contentions. Accordingly, the Panel agrees that the available record does not suggest that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant further adds that the disputed domain name is not used in connection with a bona fide use or a legitimate noncommercial or fair use. Complainant contends the domain name resolves to promote links to third-parties, some of which compete with Complainant. The Panel notes that Complainant has included a screenshot of the resolving page in Exhibit H, which shows links including “Checker Auto Parts Store,” O Reillys Auto Parts com,” and “Bumper to Bumper Auto Parts.” The Panel agrees that the use of a confusingly similar domain name to promote links in competition with Complainant’s efforts in the auto parts and services industry does not amount to a bona fide offering of goods or services envisioned under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that the disputed domain name resolves to a page promoting links that compete with Complainant in field of auto parts and related services. Complainant urges that such use disrupts Complainant’s own business efforts and therefore evinces bad faith. The Panel recalls Complainant’s Exhibit H, which shows the resolving links include “Checker Auto Parts Store,” O Reillys Auto Parts com,” and “Bumper to Bumper Auto Parts.” In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel wrote “Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).” In line with such precedent, the Panel finds evidence of Policy ¶ 4(b)(iii) bad faith disruption as the disputed domain name resolves to promote links in competition with Complainant.
Further, Complainant contends that the domain name is used in connection with click-through fees from which Respondent can generic profit after misleading Internet users to the disputed landing page by creating the impression of Complainant affiliation. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held, “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.’” At present, the Panel agrees that Respondent’s efforts implicate Policy ¶ 4(b)(iv).
Lastly, Complainant urges that Respondent has engaged in typosquatting, which further demonstrates Respondent’s bad faith in relation to the use and registration of the <dvanceautoparts.com> domain name. The Panel recalls that the disputed domain name differs from the mark by the deletion of the single letter “a”. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel held, “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).” The Panel agrees that Respondent has engaged in typosquatting here by eliminating a single letter from the otherwise incorporated mark, and find evidence of bad faith 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 <dvanceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 17, 2014
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