AutoZone Parts, Inc. v. jeff jackson / Jacksons Auto Parts and MW Inc
Claim Number: FA1412001597624
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Emily Chambers of Alston & Bird LLP, Georgia, USA. Respondent is jeff jackson / Jacksons Auto Parts and MW Inc (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozoneautoparts.com>, registered with DNC Holdings, 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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 31, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <autozoneautoparts.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 January 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2015 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@autozoneautoparts.com. Also on January 7, 2015, 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.
A timely Response was received and determined to be complete on January 24, 2015.
Additional Submission was received from the Complainant on January 29, 2015, which was found to be compliant; the National Arbitration Forum received payment on January 29, 2015.
On January 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado 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 has used AUTOZONE since 1987 in connection with the sale of automotive parts and accessories. Complainant has registered AUTOZONE with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,550,569, registered Aug. 1, 1989; filed Sep. 14, 1988). The <autozoneautoparts.com> domain name is confusingly similar to the AUTOZONE mark as the domain name incorporates the mark in full plus the descriptive phrase “auto parts” and the non-distinctive gTLD “.com.”
Respondent has no rights in the disputed domain name. There is no evidence, in the WHOIS or otherwise, that Respondent has ever used “Auto Zone” as a name or mark. Nor has Respondent received a license or consent to use the AUTOZONE mark in a domain name. Therefore, Respondent is not commonly known by the disputed name. Further, Respondent has never made a legitimate noncommercial or fair use of the disputed domain name. Respondent has only used the disputed domain name to divert traffic away from Complainant to Respondent’s own website. Respondent uses the disputed domain name to advertise a business that refers to itself as “Old Time Parts,” and “Jackson’s Auto Parts.” Complainant discovered Respondent’s use of the disputed domain name in late 2005, and Complainant’s counsel contacted Respondent. In 2007, Respondent took down the website and parked the domain name. Complainant elected to monitor the domain name but take no further action at that time. Recently, Complainant discovered that Respondent had resumed its use of the disputed domain name to again advertise the sale of auto parts.
Respondent registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii) by registering domain name such as <lincoln-parts.com> and <fairlaneparts.com>. Further, Respondent’s conduct falls within that proscribed by Policy ¶ 4(b)(iv) as Respondent is using the disputed domain name to confuse consumers into associating the domain name with Complainant and thereby diverting users to Respondent’s own website for commercial gain via the sale of competing goods. Lastly, in light of the fame of the AUTOZONE mark, Respondent must have registered the disputed domain name with actual knowledge of Complainant’s mark. Domain name registration despite actual knowledge is indicative of bad faith registration under Policy ¶ 4(a)(iii).
B. Respondent
Respondent has rights in the disputed domain name. Respondent is an auto parts store in Duluth Minnesota, which served over eight thousand customers in 2014. The “Auto Zone Auto Parts” name was coined by Complainant’s father, and has been used to help customers identify Respondent’s locale since as early as the 1940s. The phrase “Auto Zone Auto Parts” is generic in nature, and relates to the zoning regulations in the City of Duluth.
Respondent has previously included a disclaimer on the resolving website indicating that it has no affiliation with Complainant. Respondent removed the disclaimer after a few years deeming it unnecessary.
Respondent has not engaged in a pattern of bad faith. This is the first time Respondent has received a complaint despite holding forty plus domain names. Respondent did not register the disputed domain name in bad faith, but rather to operate its legitimate business specializing in vintage car parts.
C. Additional Submissions
Complainant argues that, contrary to what Respondent states, there is no “auto zone” or “automobile zone” or “automotive zone” amongst the various zoning districts the city has adopted. There also is no “particular zone” within the code which automotive related businesses are relegated. Furthermore, Complainant states that Respondent’s retail business falls under retail business category, not vehicle-related land use category.
Regarding Respondent’s argument that “auto zone” is present in zoning codes in any major city, Complainant affirms that none of the six major American cities utilize “auto zone” within its zoning districts. Moreover, extensive research lead to concluding that “auto zone” has not been a common feature of zoning codes.
Complainant disputes that there is no “high level of public awareness” regarding the term “auto zone”, as it is not used by professionals, nor is it known by the general public, which was demonstrated by Complainant through a Google search of the term.
Complainant reiterates the Respondent’s bad faith in using the term “auto zone”, arguing that the expression “auto parts” has no relationship with zoning codes and that Complainant was the largest and best known retail automotive parts stores in the United States. Complainant states once again that it would be impossible for Respondent not to have knowledge of Complainant, his competitor, when registering the disputed domain name in 2002.
Complainant also denies having requested that Respondent add the disclaimer to the website, as Complainant only learned about the use of the disputed domain name in 2005 and the disclaimer was put in 2003.
Complainant disputes having waited thirteen years to file this action, stating that, as soon as they acknowledged the domain name registration, they addressed it with Respondent, resolving the issue amicably. However, Respondent’s recent resumption of use of the disputed domain name has caused the necessity of the filing of the complaint. Complainant argues that, even if it had engaged in a delay in filing the action, the Policy does not express any time bar or statute of limitations.
Complainant is a United States retailer of automotive parts and accessories, which has used the mark AUTOZONE since, at least, 1987.
Complainant is the owner of the AUTOZONE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,550,569, registered Aug. 1, 1989; filed Sep. 14, 1988).
Respondent registered the disputed domain name on August 31, 2002. Complainant contacted Respondent about the use of the disputed domain name in 2005.
At the time this decision was issued, the disputed domain name was being used to host a website showing pay-per-click advertising, directing Internet users to websites selling goods related to automotive replacement parts and accessories.
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.
The Panel finds that Complainant has used AUTOZONE since 1987 in connection with the sale of automotive parts and accessories. Complainant has registered AUTOZONE with the USPTO (e.g., Reg. No. 1,550,569, registered Aug. 1, 1989; filed Sep. 14, 1988), and such registration indeed serves to demonstrate its Policy ¶ 4(a)(i) rights in the mark. The Panel notes that Complainant has demonstrated rights in the AUTOZONE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Next, the Panel observes that the <autozoneautoparts.com> domain name is confusingly similar to the AUTOZONE mark as the domain name incorporates the mark in full plus the descriptive phrase “auto parts” and the non-distinctive gTLD “.com.” Prior panels have determined that the addition of a gTLD serves no distinguishing value in the confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, past panels have found that the addition of a descriptive term a complainant’s mark does not mitigate confusing similiarity but may instead enhance the likelihood of confusion. For example, in Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), the panel wrote, “CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business. ”See also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
In light of this, the Panel finds that the disputed domain name is confusingly similar to the AUTOZONE mark pursuant to Policy ¶ 4(a)(i) as the only relevant alteration to the otherwise incorporated mark is the presence of “auto parts”, a phrase descriptive of Complainant’s offerings, which only adds the confusing similarity.
Therefore, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
It is well established that 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.”).
The Panel finds that there is no evidence, in the WHOIS or otherwise, that Respondent has ever used “Auto Zone” as a name or mark, nor has Respondent received a license or consent to use the AUTOZONE mark in a domain name. Therefore, the Respondent is not commonly known by the disputed domain name. In this sense, the Panels observes that the WHOIS record lists “jeff jackson / Jacksons Auto Parts and MW Inc.” as registrant.
The Panel also finds that Respondent has failed to provide corroborating support demonstrating it is commonly known by the disputed domain name, and therefore Complainant has met Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Further, the Panel notes that Respondent has never made a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent has only used the disputed domain name to divert traffic away from Complainant’s website. The Panel notes that Respondent uses the disputed domain name to advertise a business that refers to itself as “Old Time Parts,” and “Jackson’s Auto Parts.”
The Panel considers that Complainant only discovered Respondent’s use of the disputed domain name in late 2005, when Complainant’s counsel contacted Respondent. The Panel notes that Complainant elected to monitor the domain name after Respondent took down the website and parked the disputed domain name in 2007, taking no further action up to this moment, when Complainant discovered that Respondent had resumed its use of the disputed domain name to again advertise the sale of auto parts.
Therefore, in view of Respondent’s past and present use of the disputed domain name to divert users to an auto parts store providing goods and services in the same general auto sector as Complainant, Respondent has not used the disputed domain name in furtherance of 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). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Therefore, the Panel finds that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel notes that Respondent’s conduct falls within that proscribed by Policy ¶ 4(b)(iv) as Respondent is using the disputed domain name to confuse consumers into associating the disputed domain name with Complainant and thereby diverting users to Respondent’s own website for commercial gain via the sale of competing goods and services.
As Respondent was using the <autozoneautoparts.com> domain name to sell auto parts, the same offerings as Complainant, and likely profiting through the venture, it is clear that Respondent was using the disputed domain name to mislead users as to Complainant’s affiliation with the dispute domain name in pursuit of profit. As such conduct is prohibited by Policy ¶ 4(b)(iv), Respondent has engaged in bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel agrees that there is no “high level of public awareness” regarding the term “auto zone”, as it is not used by professionals, nor is it known by the general public, which was demonstrated by Complainant through a Google search of the term.
In fact, the Panel notes that he majority of the google search results, and nearly all the results in the first two searches, referred to Complainant’s AUTOZONE mark.
The Panel also finds that It is highly unlikely that Respondent registered the disputed domain name without actual knowledge of Complainant, as they are a major competitor in such market segment, being evident the Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Furthermore, the Panel concludes that Respondent failed to provide any evidence of having used the terms “auto zone” or “auto parks” before the registration of the disputed domain name.
In view of the above, the Panel finds that Respondent registered the <autozoneautoparts.com> domain name in bad faith for the purposes of 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 <autozoneautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: February 10, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page