Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Domain Admin / PrivacyProtect.org
Claim Number: FA1407001572869
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avanceautoparts.com>, registered with Moniker Online Services 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 2, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <avanceautoparts.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 August 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 2014 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@avanceautoparts.com. Also on August 4, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 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 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
1. Respondent’s <avanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <avanceautoparts.com> domain name.
3. Respondent registered and uses the <avanceautoparts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for its ADVANCE AUTO PARTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267 registered January 4, 1994).
Respondent registered the <avanceautoparts.com> domain name on April 10, 2004, and uses it to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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 provides evidence that it owns registrations for the ADVANCE AUTO PARTS mark with the USPTO. Panels have conclusively agreed that a registration with the USPTO for a given mark is sufficient to establish rights in that mark under Policy ¶ 4(a)(i) regardless of respondent’s location. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Thus, the Panel finds that Complainant has rights in the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i).
Respondent’s <avanceautoparts.com> domain name simply removes the letter “d” from the word ADVANCE in Complainant’s mark and adds the gTLD “.com.” Panels have frequently found that removing a letter from a complainant’s mark and adding a gTLD does not differentiate the disputed domain name from the registered mark to the extent to avoid a finding of confusingly similar under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Respondent’s removal of the spaces in Complainant’s mark is also not a distinguishing feature of the disputed domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <avanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent has no rights or legitimate interests in the <avanceautoparts.com> domain name under Policy ¶ 4(c)(ii), stating that Respondent is not commonly known by the disputed domain name. Complainant further states that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The WHOIS information for Respondent’s disputed domain name lists “Domain Admin” as registrant, with a registration date of April 10, 2004. The panel in Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Nat. Arb. Forum Oct. 29, 2013) held that some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record.” Likewise, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) the panel concluded 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. The Panel similarly finds that Respondent is not commonly known by the <avanceautoparts.com> domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <avanceautoparts.com> domain name under Policy ¶¶ 4(c)(i) or (iii), arguing that Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that the website at <avanceautoparts.com> displays links including, “Auto Parts,” “Kelley Blue Book,” “GM Auto Accessories,” and “Auto Accessories.” Prior panels have commonly concluded that it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name to resolve to a website displaying third party links that compete with a complainant. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent’s use of the disputed domain name does not convey rights or legitimate interests to Respondent under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent’s <avanceautoparts.com> domain name resolves to a website displaying pay-per-click links promoting products that compete with Complainant, diverting potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business and revenue. The panel in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) stated, “Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).” Similarly, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii).
Respondent uses the disputed domain name to attract and mislead consumers for Respondent’s own profit by collecting pay-per-click revenue. The panel in Google Inc. v. Aloysius Thevarajah, FA1295342 (Nat. Arb. Forum Dec. 31, 2009) concluded that respondent’s use of a confusingly similar domain name to resolve to a parked webpage that features hyperlinks to third-parties unrelated to a complainant “constitutes bad faith registration and use under Policy ¶ 4(b)(iv);” see also 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 Policy ¶ 4(b)(iv).”). The Panel finds that Respondent’s use of the confusingly similar <avanceautoparts.com> domain name to resolve to a website displaying third-party links from which Respondent presumably collects revenue, amounts to bad faith use and registration under Policy ¶ 4(b)(iv).
Respondent’s <avanceautoparts.com> domain name is also a classic example of bad faith typosquatting, as Respondent merely removes one letter from Complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel therefore finds further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that 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 <avanceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 1, 2014
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