Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1407001572882
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceautooparts.com>, <advanceautopaarts.com>, <advanceautoparts.net>, <advanceautopats.com>, <advanceautoperts.com>, <advanceautopsrts.com>, <advanceaytoparts.com>, <advanecautoparts.com>, and <advnceautoparts.com>, registered with Internet.Bs Corp.
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.
The Honourable Neil Anthony Brown QC 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.
On August 8, 2014, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <advanceautooparts.com>, <advanceautopaarts.com>, <advanceautoparts.net>, <advanceautopats.com>, <advanceautoperts.com>, <advanceautopsrts.com>, <advanceaytoparts.com>, <advanecautoparts.com>, and <advnceautoparts.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 September 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@advanceautooparts.com, postmaster@advanceautopaarts.com, postmaster@advanceautoparts.net, postmaster@advanceautopats.com, postmaster@advanceautoperts.com, postmaster@advanceautopsrts.com, postmaster@advanceaytoparts.com, postmaster@advanecautoparts.com, and postmaster@advnceautoparts.com. Also on September 3, 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 September 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1.Complainant has rights to the ADVANCE AUTO PARTS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267 registered Jan. 4, 1994). Complainant uses the ADVANCE AUTO PARTS mark for auto parts retail.
2.The <advanceautooparts.com>, <advanceautopaarts.com>, <advanceautoparts.net>, <advanceautopats.com>, <advanceautoperts.com>, <advanceautopsrts.com>, <advanceaytoparts.com>, <advanecautoparts.com>, and <advnceautoparts.com> domain names in dispute are all confusingly similar to the ADVANCE AUTO PARTS mark.
3. Respondent lacks rights or a legitimate interest in the disputed domain names.
4.There is no evidence that Respondent has been commonly known by the disputed domain names. Respondent is not affiliated with Complainant, and the WHOIS record lists “Fundacion Private Whois / Domain Administrator” as registrant. Additionally, the domain names resolve to websites featuring generic links to third-party websites, some of which compete with Complainant’s auto parts retail business.
5. Respondent has listed the disputed domain names for sale, which suggests bad faith.
6. Further, Respondent is a serial cybersquatter as shown by prior UDRP decisions.
7. Respondent also uses the domain names to promote links in competition with Complainant, and therefore is in violation of Policy ¶ 4(b)(iii). Because Respondent generates revenue from such competing links, Policy ¶ 4(b)(iv) is also implicated.
8. Respondent’s typosquatting behavior is additional evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the auto parts retail industry and which uses the ADVANCE AUTO PARTS mark for that purpose.
2. Complainant has rights to the ADVANCE AUTO PARTS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267 registered Jan. 4, 1994).
3. The disputed domain names were registered on various dates the earliest of which relates to <advanceautopats.com> which was registered on October 2, 2005.
4. Respondent has caused the domain names to resolve to websites with links to sites promoting goods and services in competition with those of Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights to the ADVANCE AUTO PARTS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267 registered Jan. 4, 1994). Complainant uses the ADVANCE AUTO PARTS mark for auto parts retail. While Respondent purportedly resides in Panama, the Panel agrees that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i) relating to a showing of rights. See 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 second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ADVANCE AUTO PARTS trademark. Complainant argues the <advanceautooparts.com>, <advanceautopaarts.com>, <advanceautoparts.net>, <advanceautopats.com>, <advanceautoperts.com>, <advanceautopsrts.com>, <advanceaytoparts.com>, <advanecautoparts.com>, and <advnceautoparts.com> domain names are all confusingly similar to the ADVANCE AUTO PARTS mark. The Panel notes that the domain names differ from the mark by a single letter in each case, whether that letter be added, omitted, transposed, or substituted. The Panel also notes that the domain names eliminate the spacing from the ADANCE AUTO PARTS mark, and add a generic top-level domain (“gTLD”). Prior panels have concluded that the elimination of spacing and addition of a gTLD are irrelevant to the Policy ¶ 4(a)(i) consideration as spaces are impermissible in domains and TLDs are required. 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)). Further, prior panels have found confusing similarity where the domain name was comprised of a mark altered by a single letter. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Accordingly, the Panel agrees that the disputed domain names are all confusingly similar to the ADVANCE AUTO PARTS mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s ADVANCE AUTO PARTS trademark and used it in its domain names, making only minor spelling alterations, thus implying that the domain names are official domain names of Complainant and that they will lead t official websites of Complainant which is not true;
(b) Respondent has then caused the domain names to resolve to websites with links to sites promoting goods and services in competition with those of Complainant.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent lacks rights or a legitimate interest in the disputed domain names. Complainant claims there is no evidence that Respondent has been commonly known by the disputed domain names. In support, Complainant notes Respondent is not affiliated with Complainant, and the WHOIS record lists “Fundacion Private Whois / Domain Administrator” as registrant. Given the available evidence, which is not supplemented by a response, the Panel agrees there is no indication that Respondent is commonly known by these disputed domain names. 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 disputed domain name).
(e) Additionally, Complainant asserts the domain names resolve to websites featuring generic links to third-party websites, some of which compete with Complainant’s auto parts retail business. The Panel notes that the names resolve to feature links such as “Auto Zone,” “O’Reilly,” and “Vista Auto Parts.” See Compl., at Attached Ex. H. Complainant maintains such use does not amount to a bona fide offering, or legitimate use as imagined by Policy ¶¶ 4(c)(i) and (iii). In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel held that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business.” Here, the Panel agrees that Respondent’s promotion of commercial links in competition with Complainant reveals Respondent is using the domain names for 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims bad faith is demonstrated by Respondent’s offers to sell the disputed domain names. In CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), the panel wrote, “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” The Panel notes however, that having regard to Complainant’s Ex. I, the only domain name listed for sale is <advanceautooparts.com>. Given the confusing similarity of the name to Complainant’s mark, the Panel agrees that the circumstances support a finding of Policy ¶ 4(b)(i) bath faith as to the registration and use of the <advanceautooparts.com> domain name.
Secondly, Complainant argues for a finding of bad faith pursuant to Policy ¶ 4(b)(ii). Complainant claims Respondent is a serial cybersquatter as shown by prior UDRP decisions. Complainant has provided the Panel with three prior UDRP decisions against Respondent and those decisions are persuasive. See Compl., at Attached Ex. N; e.g., Yahoo! Inc., v. Domain Administrator / Fundacion Private Whois, FA 1541475 (Nat. Arb. Forum Mar. 14, 2014). Complainant also argues that Respondent holds other domain names that appear to be typosquatted versions of marks but where the domain names are not yet in dispute in proceedings. On this point, although the Panel notes Complainant’s interpretation of Policy ¶ 4(b)(ii), prior panels in general have declined to find evidence of bad faith based on apparent typosquatting in cases that have not been subject to administrative proceedings under the UDRP or judicial decisions that affect Respondent. However, the Panel finds that Respondent’s history of bad faith and modus operandi informs the Panel’s ¶ 4(b)(ii) bad faith consideration and accordingly it makes the finding of bad faith within the meaning of Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Thirdly, Complainant urges that Respondent uses the domain names to promote links in competition with Complainant, and that Respondent has acted in violation of Policy ¶ 4(b)(iii). The Panel recalls that the domain names resolve to promote links in competition with Complainant’s auto parts sales, including, “Auto Zone,” “O’Reilly,” and “Vista Auto Parts.” See Compl., at Attached Ex. H. Prior panels have found evidence of bad faith disruption where the domain name promotes links in competition with the complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Consistently with prior UDRP decisions, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant adds that Respondent generates revenue from these competing links, and therefore argues that Policy ¶ 4(b)(iv) is also implicated. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant. Here, the circumstances are comparable as Respondent has featured competing links from which it generates click-through revenue. The Panel agrees that such use violates Policy ¶ 4(b)(iv).
Fifthly, Complainant argues that Respondent’s typosquatting behavior is additional evidence of bad faith. In Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003), the panel found the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark, which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii). The Panel recalls that the disputed domain names differ from Complainant’s mark by a single added, omitted, substituted, or transposed letter. As the Panel agrees that Respondent has engaged in typosquatting, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the Complainant’s ADVANCE AUTO PARTS trademark and its subsequent use of the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanceautooparts.com>, <advanceautopaarts.com>, <advanceautoparts.net>, <advanceautopats.com>, <advanceautoperts.com>, <advanceautopsrts.com>, <advanceaytoparts.com>, <advanecautoparts.com>, and <advnceautoparts.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 25, 2014
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