AutoZone Parts, Inc. v. autozone dragon
Claim Number: FA1209001464851
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA. Respondent is autozone dragon (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozone.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2012.
On September 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <autozone.us> 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 9, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2012, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for the .us TLD 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 usTLD Policy, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autozone.us> domain name is confusingly similar to Complainant’s AUTOZONE mark.
2. Respondent does not have any rights or legitimate interests in the <autozone.us> domain name.
3. Respondent registered or used the <autozone.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. Respondent had notice of Complainant’s exclusive rights in the AUTOZONE mark.
ii. Respondent has no connection or affiliation with Complainant and has never received any authorization, license, or permission to use the AUTOZONE mark.
iii. Respondent’s current use of the disputed domain name for hosting a pay-per-click links website is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
i. Respondent’s use of the disputed domain name to provide Internet users with pay-per-clicks, particularly those that resolve to Complainant’s competitors, is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
ii. Respondent is likely profiting from the confusion it has created with Complainant’s mark by collecting click-through fees in association with the links displayed on its resolving website which is evidence of bad faith under Policy ¶ 4(b)(iv).
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims that it is a leading retailer and distributor of automotive replacement parts and accessories, operating more than 4,800 retail stores in the United States, Mexico, and Puerto Rico. Complainant notes that it has used the AUTOZONE mark since at least 1987 to identify the sale of automotive parts and accessories and that Complainant owns several trademark registrations with the USPTO for the AUTOZONE mark (e.g., Reg. No. 1,550,569 registered Aug. 1, 1989). Complainant also notes that it owns trademark registrations with the KIPO for the AUTOZONE mark (e.g., Reg. No. 4500134020000 registered Aug. 19, 2005). Based upon Complainant’s trademark registrations, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i)’s first prong. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Further, Complainant argues that Respondent’s <autozone.us> domain name is confusingly similar to Complainant’s AUTOZONE mark. Complainant argues that the only distinction between the disputed domain name is the addition of the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) where the only change is the addition of the ccTLD. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
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.”).
Complainant argues that Respondent had notice of Complainant’s exclusive rights in the AUTOZONE mark. The Panel infers this argument to mean that Respondent does not possess any trademark or service mark rights in the disputed domain name. Further, the Panel notes that there is no evidence within the record to show that Respondent possesses any intellectual property rights that encompass the disputed domain name. Therefore, the Panel finds that Respondent does not possess rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Further, Complainant argues that Respondent has no connection or affiliation with Complainant and has never received any authorization, license, or permission to use the AUTOZONE mark. The Panel notes that the WHOIS registrant information identifies “autozone dragon” as the registrant. The Panel finds that even though Respondent has placed the term “autozone” within its registrant information, without affirmative evidence that Respondent is commonly known by the disputed domain name Respondent is in fact not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Lastly, Complainant argues that Respondent’s current use of the disputed domain name for hosting a pay-per-click links website is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). The Panel notes that Complainant has included a screenshot of the resolving website which the Panel finds shows various third-party links to competing and unrelated products and companies. See Complainant’s Exhibit G. Therefore, the Panel finds that Respondent is not using the <autozone.us> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent’s use of the disputed domain name to provide Internet users with pay-per-clicks, particularly those that resolve to Complainant’s competitors, is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). The Panel notes that Complainant’s screenshot appears to support Complainant’s assertions. See Complainant’s Exhibit G. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to 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 [UDRP] ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent is likely profiting from the confusion it has created with Complainant’s mark by collecting click-through fees in association with the links displayed on its resolving website which is evidence of bad faith under Policy ¶ 4(b)(iv). The Panel agrees and find accordingly under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).
Lastly, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the AUTOZONE mark through Complainant’s extensive use of the mark and its trademark registrations around the world. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, and the Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autozone.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 16, 2012
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