Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin
Claim Number: FA1506001625582
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advanceautopartrs.com>, registered with Fabulous.com Pty 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2015; the Forum received payment on June 22, 2015.
On June 24, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <advanceautopartrs.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@advanceautopartrs.com. Also on June 29, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 made the following contentions.
Complainant owns the ADVANCE AUTO PARTS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267, registered January 4, 1994). Complainant is the second largest retailer of automotive replacement parts and accessories nationwide, and uses the ADVANCE AUTO PARTS mark in connection with its goods and services. The <advanceautopartrs.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. The <advanceautopartrs.com> domain name incorporates the mark entirely while eliminating the spaces in Complainant’s mark, misspelling the “PARTS” portion of ADVANCE AUTO PARTS mark and inserting an additional “r”, and adding the generic top-level domain (“gTLD”) “.com” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS record for the disputed domain name reflects that Respondent is commonly known by the disputed domain name. Complainant has not licensed, authorized, or permitted Respondent to register the disputed domain name. Further, Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name redirects unsuspecting Internet users to a website that features generic hyperlinks, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H.
Respondent has engaged in bad faith registration and use of the <advanceautopartrs.com> domain name. Respondent has listed the disputed domain name for sale for a sum of $4,950.00. Further, Respondent is a serial cybersquatter who has engaged in an ongoing pattern of bad faith registration. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Additionally, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the second largest retailer of automotive replacement parts and accessories in the United States and uses the ADVANCE AUTO PARTS mark in connection with its goods and services.
2. Complainant owns the ADVANCE AUTO PARTS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267, registered January 4, 1994).
3. The disputed <advanceautopartrs.com> domain name was registered on April 15, 2010.
4. The domain name redirects unsuspecting Internet users to a website that features generic hyperlinks, some of which directly compete with Complainant’s business.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant states that it owns the ADVANCE AUTO PARTS mark through its registration with the USPTO (e.g., Reg. No. 1,815,267, registered January 4, 1994). Complainant argues that it is the second largest retailer of automotive replacement parts and accessories nationwide, and uses the ADVANCE AUTO PARTS mark in connection with its goods and services. Past panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even where a respondent resides in a different country. 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).”); see also 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). Accordingly, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant submits that the <advanceautopartrs.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. The <advanceautopartrs.com> domain name eliminates the spaces in Complainant’s mark, misspells the “PARTS” portion of ADVANCE AUTO PARTS mark by inserting an additional “r”, and adds the gTLD “.com” to the disputed domain name. Previous panels have found that the elimination of spaces is irrelevant to the analysis of confusing similarity, since spaces are impermissible in domain names. Past panels have also found that the addition of a gTLD is irrelevant, since gTLDs are a required feature of domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Previous panels have also found that including a misspelled version of a complainant’s mark, such as adding a single character, does not negate a finding of confusing similarity that otherwise exists, as it does in the present case. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds the <advanceautopartrs.com> domain name is confusingly similar pursuant to Policy ¶ 4(a)(i).
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 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 Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADVANCE AUTO PARTS mark and to use it in its domain name which is confusingly similar to the mark;
(b) Respondent registered the disputed domain name on April 15, 2010;
(c) The domain name redirects unsuspecting Internet users to a website that features generic hyperlinks, some of which directly compete with Complainant’s business;
(d) Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS record for the disputed domain name reflects that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name refers to “Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin” as the registrant of record. See Compl., at Attached Ex. I. Complainant claims that it has never licensed, authorized, or permitted Respondent to register the disputed domain name. Lacking a Response from Respondent, in which it could refute these allegations, the Panel finds that Complainant’s contentions are adequate to establish that Respondent lacks rights to the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name);
(e) Complainant asserts that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent’s disputed domain name redirects unsuspecting Internet users to a website that features generic hyperlinks, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H. Complainant presumes that Respondent receives pay-per-click fees through the featured hyperlinks. The Panel notes that some of the displayed hyperlinks include “Auto Parts Buy” and “Used Auto Parts Salvage Yards.” Id. Prior panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding 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”). The Panel concludes that Respondent’s use of competing hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel furthers agree with Complainant that Respondent presumably attempts to profit through pay-per-click fees; thus, Respondent cannot establish a “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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant demonstrates in its Attached Exhibit I that Respondent has listed the disputed domain name for sale for the sum of $4,950.00. Complainant asserts that offering a domain name for sale supports a finding of bad faith. Previous panels have agreed that a general offer to sell a confusingly similar domain name is evidence of bad faith registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel agrees that Respondent has requested a sum that is an excess of out-of-pocket costs, which further demonstrates bad faith. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). The Panel thus finds that Respondent has registered the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant claims that Respondent is a serial cybersquatter who has engaged in an ongoing pattern of bad faith registration. The Panel notes that Complainant has provided evidence of previous UDRP decisions against Complainant in its Attached Exhibit N. See Enterprise Holdings, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1331738 (Nat. Arb. Forum Aug. 10, 2010); Shionogi & Co. Ltd v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1342377 (Nat. Arb. Forum Oct. 6, 2010); Deli Management, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301280 (Nat. Arb. Forum Feb. 17, 2010). Prior panels have agreed that having multiple prior UDRP decisions that result in findings of bad faith or transfer indicate a respondent’s bad faith registration. 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).”). As the Panel maintains that Complainant’s evidence is sufficient to represent a pattern of bath faith behavior by Respondent and as the Panel so finds, the Panel find that Respondent has engaged in bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant claims that Respondent’s displayed hyperlinks divert potential customers away from Complainant to third-party websites. See Compl., at Attached Ex. H. The Panel notes that Internet users may be redirected to competing websites, including <pepboys.com> and <autopartswarehouse.com>. Id. Past panels have found that this type of competing and disruptive use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). 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)). As a result, the Panel finds that Respondent’s disruptive behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant submits that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant also submits that Respondent’s use of “click through” hyperlinks, through which Respondent likely receives revenue for each misdirected Internet user, demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). Past panels have agreed that using a disputed domain name to feature competing hyperlinks on the resolving website demonstrates bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Fifthly, Complainant argues that Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Internet users would simply need to add only one extra character to be mistakenly directed to Respondent’s website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel accordingly finds that Respondent’s typosquatting conduct is additional 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 <advanceautopartrs.com> domain name using the ADVANCE AUTO PARTS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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.
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 <advanceautopartrs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 23, 2015
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