Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Domain Admin / Hong Kong Domain
Claim Number: FA1410001584850
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Hong Kong Domain (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advanceauoparts.com>, registered with Internet.bs Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2014; the National Arbitration Forum received payment on October 14, 2014.
On October 20, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <advanceauoparts.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. 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 October 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@advanceauoparts.com. Also on October 20, 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 November 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
1. Complainant makes the following allegations:
a. Complainant’s mark:
i. Complainant uses the ADVANCE AUTO PARTS mark to promote its retail operations. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267, registered Jan. 4, 1994). Further, the <advanceauoparts.com> domain name capitalizes on common misspelling of the mark, along with the addition of the “.com” generic top-level domain (“gTLD”).
b. Respondent’s infringing activities:
ii. Respondent uses the <advanceauoparts.com> domain name without rights or legitimate interests.
iii. First, Respondent is not commonly known as the <advanceauoparts.com> domain name, nor has Complainant authorized Respondent’s use of the mark in domain names.
iv. Second, Respondent uses the <advanceauoparts.com> domain name to host click-through style hyperlink advertising.
v. Respondent has registered and is using the disputed domain name in bad faith.
vi. Respondent is placing the domain name up for public sale. The existence of competing advertisements on the domain name’s website is suggestive of an intent to disrupt Complainant’s commercial enterprise. One could easily suffer a likelihood of confusion as to Complainant’s association with the domain name, and through that confusion Respondent profits by way of advertising revenue. Furthermore, the mere use of a typosquatted domain name such this one is evidence of bad faith under the Policy.
2. Respondent did not submit a response.
1. Respondent’s <advanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <advanceautoparts.com > domain name.
3. Respondent registered or used the <advanceautoparts.com> 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.
Complainant uses the ADVANCE AUTO PARTS mark to promote its retail operations. Complainant notes how the mark has been registered with the USPTO (e.g., Reg. No. 1,815,267, registered Jan. 4, 1994). This Panel agrees that Complainant’s trademark registration is sufficient evidence of its Policy ¶ 4(a)(i) rights in the ADVANCE AUTO PARTS mark. 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.”).
Complainant argues that the <advanceauoparts.com> domain name capitalizes on common misspelling of the mark, along with the addition of the “.com” gTLD. The Panel finds that the domain name is confusingly similar to Complainant’s mark because deleting a single letter “t” and adding the gTLD “.com” is insufficient to create a distinctive domain name. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”).
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 claims that Respondent is not commonly known as the <advanceauoparts.com> domain name, nor has Complainant authorized Respondent’s use of the mark in domain names. The Panel takes note of the WHOIS information, which lists “Domain Admin / Hong Kong Domain” as the registrant of record for the disputed domain names. This Panel agrees that Respondent is simply not commonly known by the domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent uses the <advanceauoparts.com> domain name to host click-through style hyperlink advertising. See Compl., at Attached Ex. H. The Panel agrees that Respondent has no bona fide offering or legitimate noncommercial or fair use in promoting an array of various advertising on the disputed domain name’s website. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Complainant claims that Respondent is placing the domain name up for public sale. The Panel notes that Exhibit H shows how Respondent promotes the sale of the domain name by stating “BUY This Domain Name Now!” In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found that a general offer to sell a domain name is evidence of bad faith. Here the Panel agrees that promoting the sale of this domain name is Policy ¶ 4(b)(i) bad faith registration and use of the domain name.
Complainant claims that the existence of competing advertisements on the domain name’s website is suggestive of an intent to disrupt Complainant’s commercial enterprise. The Panel notes that among the hyperlinks promoted on the disputed domain name are links to “Car & Truck Accessories” and “Battery for a Car.” See Compl., at Attached Ex. H. This Panel finds such advertisements to be sufficiently competitive with the ADVANCE AUTO PARTS mark as to create disruption of Complainant’s business—Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Internet users could easily suffer a likelihood of confusion as to Complainant’s association with the domain name, and through that confusion Respondent profits by way of advertising revenue. The Panel agrees that as Respondent uses the domain name for hyperlinks, as shown in Exhibit H, there is a Policy ¶ 4(b)(iv) bad faith because Respondent profits by way of hyperlink advertisement revenue each time a confused Internet user clicks on one of the domain name’s web links. 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).
Complainant argues that the mere use of a typosquatted domain name such this one is evidence of bad faith under the Policy. The Panel agrees that Respondent’s domain name is essentially a gTLD added to a single-character misspelling of Complainant’s mark. This Panel finds this to be typosquatting, as Respondent is capitalizing on a very minor error Internet users might make in trying to reach Complainant’s website. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in 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 <advanceauoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 26, 2014
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