AutoZone Parts, Inc. and ALLDATA LLC v. Shu Lin c/o Shu Lin Co aka Host Master c/o Transure Enterprise Ltd
Claim Number: FA1006001330042
Complainant is AutoZone
Parts, Inc. and ALLDATA LLC (“Complainant”),
represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA. Respondent is Shu Lin c/o Shu Lin Co a/k/a Host Master c/o Transure Enterprise Ltd (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <autotzone.com>, <autozonewards.com>,
<autozoneespanol.com>, and <caralldata.com>,
registered with Above.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 15, 2010.
On June 20, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2010, 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@autotzone.com, postmaster@autozonewards.com, postmaster@autozoneespanol.com, and postmaster@caralldata.com. Also on June 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
On July 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 a Written Notice, as defined in Rule 1. 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.
Preliminary Issue:
Multiple Respondents
In the instant proceeding, Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, although operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the content located at the disputed domain names is nearly identical. Complainant also asserts that two of the disputed domain names, <autotzone.com> and <autozonewards.com>, were registered on the same date. Complainant argues that each of the disputed domain names was registered using the same Australian-based privacy service and that the cease-and-desist notices sent to Respondent via the provided email addresses for each disputed domain name were all answered by an individual identifying himself as “Mr. David Smith.” Complainant further alleges that each response was sent from the same email address, parkdns@gmail.com, and included a nearly identical demand for payment in exchange for the disputed domain name.
The Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity and thus this Panel chooses to proceed with the instant proceeding to a determination on the merits.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <autotzone.com>, <autozonewards.com>, and <autozoneespanol.com> are confusingly similar to Complainant’s AUTOZONE.COM mark.
Respondent’s <caralldata.com> domain name is confusingly similar to Complainant’s ALLDATA mark.
2. Respondent has no rights to or legitimate interests in the <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names.
3. Respondent registered and used the <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc. and ALLDATA LLC, is a retailer and distributor of automotive replacement parts and accessories and a provider of automotive repair information and solutions to the professional automotive service industry. Complainant owns multiple trademark registrations for the AUTOZONE.COM and related marks with the United States Patent and Trademark Office (“USPTO”) and other trademark offices worldwide:
USPTO
AUTOZONE Reg. No. 1,700,101 issued July 14, 1992;
AUTOZONE.COM Reg. No. 2,449,353 issued May 8, 2001;
AUTOZONE Reg. No. 2,225,191 issued Feb. 23, 1999;
AUTOZONE Reg. No. 2,397,635 issued Oct. 24, 2000;
AUTOZONE Reg. No. 3,123,505 issued Aug. 1, 2006;
AUTOZONE Reg. No. 3,281,590 issued Aug. 21, 2007; and
AUTOZONE Reg. No. 581,185 issued June 25, 1992.
Complainant also owns trademark registrations for the ALLDATA and related marks with the USPTO:
ALLDATA Reg. No. 1,556,655 issued Sept. 19, 1989; and
ALLDATA Reg. No. 2,571,052 issued May 21, 2002.
Respondent, Shu Lin c/o Shu Lin Co a/k/a Host Master c/o Transure Enterprise Ltd, registered the <autotzone.com> and <autozonewards.com> domain names March 20, 2009; the <autozoneespanol.com> domain name March 26, 2009; and the <caralldata.com> domain name November 26, 2009. Each of the disputed domain names resolves to a parking page that features links to a number of third party websites that compete with and operate in the same industry as Complainant. Respondent offered to sell the disputed domain names to Complainant for prices ranging from $250. to $500. in response to Complainant’s cease-and-desist notices.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant owns multiple trademark registrations for the AUTOZONE.COM and related marks with the USPTO and other trademark offices worldwide:
USPTO
AUTOZONE Reg. No. 1,700,101 issued July 14, 1992;
AUTOZONE.COM Reg. No. 2,449,353 issued May 8, 2001;
AUTOZONE Reg. No. 2,225,191 issued Feb. 23, 1999;
AUTOZONE Reg. No. 2,397,635 issued Oct. 24, 2000;
AUTOZONE Reg. No. 3,123,505 issued Aug. 1, 2006;
AUTOZONE Reg. No. 3,281,590 issued Aug. 21, 2007; and
AUTOZONE Reg. No. 581,185 issued June 25, 1992.
Complainant also owns trademark registrations for the ALLDATA and related marks with the USPTO:
ALLDATA Reg. No. 1,556,655 issued Sept. 19, 1989; and
ALLDATA Reg. No. 2,571,052 issued May 21, 2002.
The Panel finds that such trademark registrations with the USPTO sufficiently demonstrate Complainant’s rights in the AUTOZONE.COM and ALLDATA marks for the purposes of a Policy ¶ 4(a)(i) analysis even when Respondent lives or operates in a country where the mark is not registered. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant alleges that Respondent’s <autotzone.com>, <autozonewards.com>, and <autozoneespanol.com> domain names are confusingly similar to Complainant’s AUTOZONE.COM mark. The <autotzone.com> domain name consists of Complainant’s mark with an additional letter “t” inserted between “auto” and “zone,” while the <autozonewards.com> and <autozoneespanol.com> domain names are comprised of Complainant’s mark combined with the generic word “wards” or “espanol.”
The Panel finds that introducing an additional letter or a generic term into Complainant’s mark fails to prevent confusing similarity according to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
Therefore, the Panel finds that Respondent’s <autotzone.com>, <autozonewards.com>, and <autozoneespanol.com> domain names are confusingly similar to Complainant’s AUTOZONE.COM mark according to Policy ¶ 4(a)(i).
Complainant also urges that Respondent’s <caralldata.com> domain name is
confusingly similar to Complainant’s ALLDATA mark because the only changes made
to the mark are the additions of the descriptive word “car” and the generic
top-level domain name (“gTLD”) “.com.”
The Panel finds that adding a descriptive word to Complainant’s mark
does not distinguish the disputed domain name from being confusingly
similar. See Gillette Co. v. RFK Assocs., FA 492867 (Nat.
Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,”
which described the complainant’s products, and the generic top-level domain
“.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Constellation Wines U.S., Inc. v.
Tex. Int’l Prop. Assocs.,
FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the
descriptive term “wine” to the complainant’s BLACKSTONE mark in the
<blackstonewine.com> domain name was insufficient to distinguish the mark
from the domain name under Policy ¶ 4(a)(i)).
The Panel also finds that appending the gTLD “.com” does not distinguish
the disputed domain name or prevent confusing similarity under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
Therefore, the Panel finds that Respondent’s <caralldata.com> domain name is confusingly similar to Complainant’s ALLDATA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that all four of the disputed domain names are confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
When alleging that Respondent does not have rights to or legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) requires Complainant to make a prima facie case in support of such assertions. After Complainant satisfies this obligation as Complainant has done here, the burden of proof to show rights and legitimate interests shifts to Respondent. The Panel is permitted to make an inference from Respondent’s failure to Respond to the Complaint that Respondent has no rights to and/or legitimate interests in the disputed domain names according to Policy ¶ 4(a)(ii). Respondent has not contested Complainant’s allegations and the Panel may take them as true. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).
However, in order to make a complete determination on the issue, the Panel elects to consider the evidence in the record to decide whether Respondent has such rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
The Panel finds that no evidence in the record supports any contention that Respondent is commonly known by the <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and/or <caralldata.com> domain names. The WHOIS information for the disputed domain names does not reflect any nominal association between Respondent and the disputed domain names. Complainant also alleges that Complainant has not authorized Respondent to use its AUTOZONE or ALLDATA marks in any way. Thus, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Complainant further contends that Respondent uses the <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names to host pay-per-click links. Complainant asserts that these pay-per-click links redirect Internet users to the sites of Complainant’s competitors, such as Pep Boys, Advance Auto Parts, Auto Parts Warehouse, JC Whitney, and PartsTrain.com, as well as other automotive related links. The Panel finds that using the disputed domain names to sponsor such links to both competing and unrelated websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant asserts that after sending Respondent
cease-and-desist notices relative to the <autotzone.com>, <autozonewards.com>,
<autozoneespanol.com>, and
<caralldata.com> domain names,
Complainant received correspondence from Respondent offering to transfer the
disputed domain names to Complainant in exchange for amounts ranging from $250
to $500. The Panel finds that
Respondent’s willingness to sell the disputed domain names supports findings
that Respondent lacks rights and legitimate interests in the disputed domain
names containing Complainant’s protected mark under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a
contested domain name for more than its out-of-pocket costs provided additional
evidence that Respondent had no rights or legitimate interests in the contested
domain name); see also Vance
Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007)
(“An attempt by a respondent to sell a domain name to a complainant who owns a
trademark with which the domain name is confusingly similar for an amount in
excess of out-of-pocket costs has been held to demonstrate a lack of legitimate
rights or interests.”).
Complainant additionally notes that Respondent’s <autotzone.com> domain name is an
instance of typosquatting because the domain name, which contains only one
additional letter in addition to Complainant’s mark, could easily result from a
typographical error. Complainant asserts
that Respondent’s disputed domain name is therefore aiming to capitalize on a
mistaken variation of Complainant’s AUTOZONE.COM mark. This may also be taken
as proof that Respondent has no rights and legitimate interests in the <autotzone.com> domain name pursuant
to Policy ¶ 4(a)(ii).
See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”); see also LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
The Panel finds that Respondent has no rights to or
legitimate interests in the disputed domain names containing Complainant’s
protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly urges that Respondent registered and used
the disputed domain names in bad faith.
Complainant contends that in response to cease-and-desist notices that
it sent to Respondent, Complainant received correspondence from Respondent
offering to sell the disputed domain names for prices ranging from $250 to
$500. Complainant alleges that these
prices are in excess of Respondent’s documented out-of-pocket costs and
therefore show bad faith registration and use according to 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).”); see also Little Six, Inc. v. Domain For
Complainant also asserts that Respondent’s <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names disrupt Complainant’s business by advertising for key competitors, such as Pep Boys, Advance Auto Parts, and so forth, through the pay-per-click links displayed on the disputed domain names’ resolving websites. The Panel finds that appropriating Complainant’s marks in the disputed domain names to benefit Complainant’s competitors while harming Complainant’s business demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent’s display of pay-per-click links at the <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names is an attempt to commercially profit from misuse of Complainant’s mark. Complainant asserts that Respondent registered Complainant’s mark as part of the disputed domain names in order to attract Internet users to its directory websites and to mislead them into believing an affiliation existed between Complainant and Respondent. Higher traffic to Respondent’s websites correlates to a greater likelihood that Internet users clicking on the displayed links will be confused as to the sponsorship by Complainant’s of Respondent site and such use is calculated to gain financial benefit from click-through fees. The Panel finds that Respondent’s activities support findings of bad faith registration and use according to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel previously concluded that Respondent is engaged in
the practice of typosquatting through its registration of the confusingly similar
<autotzone.com> domain
name. The Panel finds that typosquatting,
in and of itself, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net
1111111111, D2003-0232 (WIPO May 22, 2003) (finding the
respondent registered and used the domain name in bad faith because the
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged
in typosquatting, which is evidence of bad faith registration and use under
Policy ¶ 4(a)(iii)).
The Panel finds that Respondent registered and used the
disputed domain names in bad faith; Complainant satisfied the elements of ICANN
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 <autotzone.com>, <autozonewards.com>, <autozoneespanol.com>, and <caralldata.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 3, 2010.
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