AutoZone Parts, Inc. v. Bin G Glu / G Design
Claim Number: FA1812001822466
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kathryn K. Van Namen of Butler Snow, LLP, Tennessee, USA. Respondent is Bin G Glu / G Design (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozoe.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 26, 2018; the Forum received payment on December 27, 2018.
On December 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <autozoe.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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@autozoe.com. Also on December 31, 2018, 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 January 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 uses the trademark AUTOZONE in connection with automotive parts and accessories. Complainant has rights in the AUTOZONE trademark based on numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. AUTOZONE - Reg. No. 1,501,718, registered Aug. 23, 1988) and more than 40 countries around the world, including the European Union Intellectual Property Office (“EUIPO”) (e.g. AUTOZONE – Reg. No. 013336102, registered Mar. 13, 2015).
Respondent’s <autozoe.com> domain name is confusingly similar to Complainant’s AUTOZONE trademark, as the domain name is identical to the trademark with only the intentional misspelling or mistyping of the word “zone” without the letter “n.”
Respondent has no rights or legitimate interests in the <autozoe.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AUTOZONE trademark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to divert internet traffic from Complainant’s website to a passively held web page.
Respondent registered and is using the <autozoe.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s bad faith is indicated by their offer of the disputed domain for sale.
Respondent registered the disputed domain name with an obvious misspelling of the AUTOZONE trademark. Respondent is using the disputed domain name to disrupt internet traffic from Complainant’s website. In light of the substantial fame and notoriety of the AUTOZONE trademarks, as well as the fact that Complainant is the largest retailer in the field, Respondent clearly had knowledge of Complainant and its trademark rights before it registered and began use of the <autozoe.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the following U.S. trademark registrations:
No. 3,278,988 AUTOZONE (word), registered August 14, 2007 for goods and services in classes 1, 3, 4, 27 and 35;
No. 3,724,931 AUTOZONE (word), registered December 15, 2009 for services in class 35;
No. 3,123,505 AUTOZONE (fig), registered August 1, 2006 for services in class 35;
No. 3,281,590 AUTOZONE (fig), registered August 21, 2007for for goods and services in classes 1, 3, 4, 27 and 35;
No. 3,281,636 AUTOZONE (fig), registered August 21, 20007 for goods in classes 1, 3, 4 and 27;
No. 3,724,930 AUTOZONE (fig), registered December 15, 2009 for services in class 35; and
No. 3,503,490 PROCARCARZONE (word), registered September 23, 2008 for services in class 42.
Complainant is also owner of the following European Union Trademark Registrations:
No. 13336102 AUTOZONE (word), registered June 22, 2015 for goods and services in classes 1, 4, 9, 12, 35, 37 and 38;
No. 8133092 AUTOZONE (word), registered October 21, 2010 for services in classes 35 and 38;
No. 13336128 AUTOZONE (fig), registered June 22, 2015 for goods and services in classes 1, 4, 9, 12, 35, 37, 38 and 39;
No. 8133134 AUTOZONE (fig), registered January 12, 20010 for goods and services in classes 1, 4, 35 and 38; and
No. 1084078 AUTOZONE (fig), registered May 15, 2001 for goods and services in classes 9, 12 and 39.
Complainant has further refereed to no less than 12 other US and EUIPO trademarks registrations, and provided printouts from each registry. The Panel notes that 11 of these clearly have another company as the registered owner, 9 of them in the name of “Speedbar, Inc”, one in the name of “Lanescan LLC”, and one in the name of “Auto Schack Inc.”. As Complainant has not provided any explanation on why these trademarks are refereed to as evidence of Complainant’s trademark rights, the Panel will not take them into consideration.
Complainant also refer to the U.S. trademark registration No. 1,550,569 AUTOZONE (word), registered August 1, 1989 for services in class 42, with the company Autozone Inc. as the registered owner. The Panel has decided to accept this reference as somewhat related to Complainant, as it may well be that Autozone Inc. and AutoZone Parts, Inc. are in the same company family, and the fact that Respondent has not questioned this reference.
Respondent registered the <autozoe.com> domain name on June 18, 2004.
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(f), 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 (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 asserts rights in the AUTOZONE trademark based upon registration of the trademark with the USPTO (e.g. No. 3,278,988 AUTOZONE, registered August 14, 2007) and in more than 40 countries around the world, including the EUIPO (e.g. No. 1084078 AUTOZONE, registered May 15, 2001). Registration of a trademark with a government authority is sufficient to establish rights in that trademark. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”).
Therefore, the Panel finds that Complainant has established rights in the AUTOZONE trademark.
Complainant next argues that Respondent’s <autozoe.com> domain name is confusingly similar to the AUTOZONE trademark, with only the intentional misspelling or mistyping of the word “zone” without the letter “n.” Typosquatting, or an intentional typographical error to a complainant’s mark, is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
The Panel agrees that the disputed domain name is confusingly similar to Complainant’s AUTOZONE trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <autozoe.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AUTOZONE trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Bin G Glu / G Design” and no information on record indicated that Respondent was authorized to register a domain name with Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <autozoe.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <autozoe.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a passively held website which is being used to divert internet traffic away from Complainant. Passive holding is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, and does not have rights or legitimate interests in the <autozoe.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s bad faith is indicated by its offering of the <autozoe.com> domain name for sale, referring to a screenshot of the web page associated with the disputed domain name that has a bright green banner that states “This Domain Name is for Sale.”. Offer of a domain name for sale indicates bad faith per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel finds that Respondent’s offer of the disputed domain name for sale indicates bad faith per Policy ¶ 4(b)(i).
Complainant further argues Respondent’s bad faith is indicated by Respondents engagement in the act of typosquatting Complainant’s AUTOZONE trademark when registering the <autozoe.com> domain name. Intentional typographical errors of a complainant’s trademark when registering a disputed domain name may indicate bad faith per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”).
The Panel agrees with Complainant, as the text on the web site connected to the disputed domain name clearly refers to the same or similar services as provided by Complainant, and find that Respondent registered the <autozoe.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that in light of the substantial fame and notoriety of the AUTOZONE trademarks, as well as the fact that Complainant is the largest retailer in the field, Respondent clearly had knowledge of Complainant and its trademark rights before it registered and began use of the <autozoe.com> domain name. A respondent’s actual knowledge in a complainant’s rights to a mark may be inferred and indicate bad faith per Policy ¶ 4(a)(iii).
However, in this case, the Panel notes that Complainant does not provide any evidence to support this claim. As noted above under “Findings”, Complainant has referred to a number of trademarks with unclear connection to Complainant, and no further material in support of the claim of substantial fame and notoriety. The Panel therefore does not agree with Complainant in that specific claim/reference. It is rather the fact that Complainant had (some) prior rights, in combination of Respondent’s use of <autozoe.com> that indicates Respondent’s knowledge of Complainant’s trademark rights prior to the registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autozoe.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 27, 2019
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