Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Colours Ltd
Claim Number: FA1506001625588
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Colours Ltd (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceautopartsd.com> and <advanceautopoarts.com>, registered with Key-Systems GmbH.
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.
Dr. Reinhard Schanda 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, Key-Systems GmbH confirmed by e-mail to the Forum that the <advanceautopartsd.com> and <advanceautopoarts.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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”). Key-System GmbH further confirmed that the language of the Registration Agreement for both domain names is English.
On June 30, 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@advanceautopartsd.com, postmaster@advanceautopoarts.com. Also on June 30, 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.
A timely Response was received and determined to be complete on July 20, 2015.
On July 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the ADVANCE AUTO PARTS mark in connection with its business as the second largest retailer of automotive replacement parts and accessories nationwide. Complainant has rights in the mark, as shown by its numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267, registered January 4, 1994). The disputed domain names are confusingly similar to Complainant’s ADVANCE AUTO PARTS mark, as Respondent has simply added the letter “d” to the end of the fully incorporated mark in the <advanceautopartsd.com> domain name and added the letter “o” in the middle of the fully incorporated mark in the <advanceautopoarts.com> domain name. With both domain names, Respondent has incorporated the “.com” generic top-level domain (“gTLD”) suffix, which should be seen as irrelevant to a Policy ¶ 4(a)(i) analysis. The disputed domain names are classic examples of typosquatting.
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as demonstrated by the available WHOIS information for the disputed domain names. Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Rather, Respondent is using the disputed domain names to redirect confused Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent has registered and is using the disputed domain names in bad faith. Respondent has listed the disputed domain names for sale. Additionally, Respondent’s use of the disputed domain names to redirect confused Internet users to Complainant’s competitors disrupts Complainant’s business and allows Respondent to attract Internet users to its own website for commercial gain. Finally, Respondent’s typosquatting behavior in itself is further evidence of bad faith.
B. Respondent
Respondent contends that the disputed domain names consist of generic terms.
In the end of its formal Response, Respondent consents to the transfer of the disputed domain names. Respondent states, “The Respondent consents to the remedy requested by the Complainant and agrees to [transfer/cancel] the disputed domain name(s) on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.” Resp., at p. 4.
The Panel notes that Respondent registered the <advanceautopartsd.com> domain name on December 9, 2010; and the <advanceautopoarts.com> domain name on September 15, 2010.
The Panel finds that:
1. The domain names <advanceautopartsd.com> and <advanceautopoarts.com> are confusingly similar to Complainant’s registered trademark.
2. The Respondent has not established rights or legitimate interests in the domain names <advanceautopartsd.com> and <advanceautopoarts.com>.
3. The Respondent has registered and is using the domain names <advanceautopartsd.com> and <advanceautopoarts.com> 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.
Preliminary issue: Consent to transfer
Respondent consents to transfer the <hthehomedepot.com> domain name to Complainant. However, the Panel decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
Complainant uses the ADVANCE AUTO PARTS in connection with its business as the second largest retailer of automotive replacement parts and accessories nationwide. Complainant argues that it has rights in the ADVANCE AUTO PARTS mark through its numerous trademark registrations with the USPTO (e.g., Reg. No. 1,815,267, registered January 4, 1994). Complainant’s argument is supported by previous UDRP decisions. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to the ADVANCE AUTO PARTS mark, because the disputed domain names incorporate Complainant’s mark in full, while adding a single letter to each domain name. Specifically, the <advanceautopartsd.com> domain name adds the letter “d” to the end of the mark and the <advanceautopoarts.com> domain name adds the letter “o” to the middle of the mark. The Panel notes that each of the disputed domain names differ from Complainant’s mark by the addition of the gTLD, “.com.” Previous panels have found that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) 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). Additionally, prior panels have found that disputed domain names that differ from a complainant’s mark by only the addition of a single letter do not escape confusing similarity. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s ADVANCE AUTO PARTS mark pursuant to Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
It is Complainant’s position that Respondent lacks rights and legitimate interests in the disputed domain names. In so arguing, Complainant alleges that Respondent is not commonly known by the disputed domain names. Further, Complainant notes that Respondent is neither licensed nor authorized to use the ADVANCE AUTO PARTS mark. The Panel notes that the WHOIS information identifies “Admin Contact” as the registrant of the disputed domain names. The Panel recalls that Respondent has consented to the transfer of the disputed domain names and thus made no argument as to whether or not it was commonly known by the disputed domain names. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Complainant argues that Respondent has failed to provide any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain names. Complainant urges that Respondent uses the disputed domain names to redirect confused Internet users to a website that offers generic third-party links to websites that directly compete with Complainant’s business. See Compl., at Attached Ex. H. The Panel finds that some of the links that are on the website are for “Pep Boys SF Bay,” “AutoZone Parts How To,” and “O’Reilly Auto Parts.” Id. Typically, panels have held that such behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Since the Panel agrees that Respondent is engaging in such competitive commercial behavior, the Panel finds that Respondent’s use of the disputed domain names is not connected to a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). To begin, Complainant argues that Respondent has placed both of the disputed domain names up for sale to the general public. The Panel finds that Complainant has provided evidence of this offer for sale at Attached Ex. I. The Panel agrees that these offers for sale serve as significant evidence of bad faith under Policy ¶ 4(b)(i). 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).”).
Next, Complainant states that Respondent’s use of the disputed domain names to redirect unsuspecting Internet users to a website that offers links to Complainant’s competitors is disruptive to Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Compl., at Attached Ex. H. As discussed above, the Panel notes that some of the links include “Pep Boys SF Bay,” “AutoZone Parts How To,” and “O’Reilly Auto Parts.” Id. In the past, panels have decided that such competitive behavior is disruptive and constitutes bad faith under Policy ¶ 4(b)(iii). 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).”). Consequently, the Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent uses the disputed domain names in bad faith according to Policy ¶ 4(b)(iv). Complainant believes that Respondent uses the confusing similarity between the disputed domain names and Complainant’s ADVANCE AUTO PARTS mark to attract Internet users to its own websites for commercial gain. The Panel recalls that Respondent uses the disputed domain names to host links to Complainant’s competitors. Complainant argues that these links allow Respondent to commercially profit by collecting pay-per-click fees. Since the Panel agrees with Complainant’s contentions here, the Panel finds that Respondent has acted in bad faith according to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“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.’”).
Finally, Complainant contends that Respondent has engaged in typosquatting, which is further evidence of bad faith under Policy ¶ 4(a)(iii). The Panel recalls that Respondent’s disputed domain names differ from Complainant’s ADVANCE AUTO PARTS by only the addition of a single letter. Namely, Respondent has simply added the letter “d” to the <advanceautopartsd.com> domain name and the letter “o” to the <advanceautopoarts.com> domain name. The Panel finds that these simple misspellings add up to typosquatting. As a result the Panel holds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii). 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 <advanceautopartsd.com> and <advanceautopoarts.com> domain names both be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: August 3, 2015
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