Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Ryan G Foo / PPA Media Services
Claim Number: FA1510001642044
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advanceautopart.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2015; the Forum received payment on October 12, 2015.
On October 14, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <advanceautopart.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 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@advanceautopart.com. Also on October 19, 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 November 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has registered the ADVANCE AUTO PARTS trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,484,796, registered Apr. 12, 1988). The mark is used in connection with the sale of retail automobile parts.
2. The <advanceautopart.com> domain name is confusingly similar to the ADVANCE AUTO PARTS trademark because the domain name contains nearly the entire mark, save for the removal of the letter “s,” elimination of spacing between words, and the addition of the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant.
4. Furthermore, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name is being used to display various hyperlinks, some of which compete with Complainant.
5. Respondent has engaged in bad faith registration and use. Respondent has been subjected to prior UDRP proceedings, which is evidence of bad faith under Policy ¶ 4(b)(ii). Respondent has disrupted Complainant’s business in bad faith under Policy ¶ 4(b)(iii) by using the domain name to display competing hyperlinks. Respondent is also attempting to commercially profit from a likelihood of confusion, which consists of bad faith under Policy ¶ 4(b)(iv).
6. Lastly, by removing a single letter from the mark, Respondent has engaged in bad faith typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ADVANCE AUTO PARTS mark. Respondent’s domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <advanceautopart.com> domain name, and that Respondent registered and uses the 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.
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.”).
Complainant has registered the ADVANCE AUTO PARTS trademark with the USPTO (e.g., Reg. No. 1,484,796, registered Apr. 12, 1988). The mark is used in connection with the sale of retail automobile parts. Registration with the USPTO is sufficient to establish rights in a trademark under the Policy. 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.”).
Complainant argues that the <advanceautopart.com> domain name, registered on August 23, 2002, is confusingly similar to the ADVANCE AUTO PARTS trademark. Complainant notes that the domain name contains nearly the entire mark, save for the removal of the letter “s” and the addition of the gTLD “.com.” As a general rule, neither the gTLD “.com” nor the elimination of spacing between words distinguish a domain name from a trademark in which a complaining party has rights. 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.”).
In addition, confusing similarity has been found to exist where the domain name merely removed the letter “s” from the mark at issue. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Thus, the Panel finds that the <advanceautopart.com> domain name is confusingly similar to the ADVANCE AUTO PARTS trademark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known as the <advanceautopart.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the ADVANCE AUTO PARTS mark in domain names. “Ryan G Foo” is listed as the registrant of record for the disputed domain name. Moreover, the record is devoid of any evidence to indicate that Respondent is either commonly known by the <advanceautopart.com> domain name or in possession of licensing rights. Under the circumstances, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant points out that the domain name resolves to a webpage that contains various third-party hyperlinks, some of which lead to services that compete with Complainant. The resolving webpage contains links that read, “Loans,” “Lose Weight,” “Discount Parts Auto,” and “Automotive Auto Repair.” Similar circumstances have been found to fall within Policy ¶¶ 4(c)(i) and (iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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).”). Therefore, the Panel finds Respondent lacks rights under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations. Complainant has provided the Panel with copies of several instances in which Respondent was name in a UDRP proceeding and found to have acted in bad faith. Such conduct has been found to amount to bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel agrees.
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the domain name which is similar to a mark in which Complainant has rights, contains hyperlinks which offer goods and services which compete with those offered by Complainant. Further, Complainant adds that Respondent is presumably profiting from such use. These circumstances have been found to amount to bad faith under 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.’”). Therefore, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant claims that Respondent has engaged in bad faith typosquatting. By removing a single letter from the mark, Complainant contends that Respondent is attempting to take advantage of those Internet users who have mistakenly forgot to type in the letter “s.” Bad faith typosquatting has been found where the domain name was a clear misspelling of the complainant’s mark. 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 agrees that bad faith typosquatting exists in this case.
The Panel finds Complainant has satisfied 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 <advanceautopart.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 23, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page