AutoZone, Inc. v. Above.com Domain Privacy
Claim Number: FA1803001775047
Complainant is AutoZone, Inc. (“Complainant”), represented by David L. Johnson of Butler Snow LLP, Tennessee, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozonr.com>, registered with Above.com Pty Ltd..
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2018; the Forum received payment on March 12, 2018.
On March 12, 2018, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <autozonr.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 March 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2018 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@autozonr.com. Also on March 14, 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 April 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, AutoZone, Inc., is the largest retailer of automotive parts and accessories in the United States. Complainant uses the AUTOZONE mark to provide and market its products and services. Complainant claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,550,569, registered on Aug. 1, 1989) Respondent’s <autozonr.com> is confusingly similar as it contains Complainant’s AUTOZONE mark in its entirety, less the space, merely transposing the letter “e” for the letter “r.”
Respondent does not have rights or legitimate interests in the <autozonr.com> domain name. Respondent is not commonly known by the disputed domain name and conceals its personal information using a privacy protection service. Complainant also has not granted Respondent permission or license to use the AUTOZONE mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, the <autozonr.com> domain name currently resolves to an inactive website.
Respondent has registered and used the <autozonr.com> domain name in bad faith. When Complainant attempted to resolve this dispute outside of legal proceedings, Respondent only indicated to Complainant that the domain name may be for sale. Further, Respondent is using the disputed domain name to divert traffic away from Complainant’s website, which in turn disrupts Complainant’s business. Additionally, Respondent has employed a privacy service to hide its identity, and also failed to respond to cease-and-desist letters in a substantive manner. Moreover, Respondent engages in typosquatting by substituting the letter “r” for the final letter “e” in the AUTOZONE mark. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the AUTOZONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <autozonr.com> domain name.
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 claims rights in the AUTOZONE mark based upon its registration with the USPTO (e.g. Reg. No. 1,550,569, registered on Aug. 1, 1989) Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the AUTOZONE mark per Policy ¶ 4(a)(i).
Complainant asserts that the <autozonr.com> domain name is confusingly similar to the AUTOZONE mark as it contains the mark in its entirety, less the space, merely transposing the letter “e” for the letter “r.” The domain name also adds the generic top-level domain (“gTLD”) “.com”. Panels have consistently found that slight differences between domain names and registered marks, such as slightly misspelling a mark, do not distinguish the domain name from the mark incorporated therein. See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Similarly, the addition of a gTLD is irrelevant in determining whether a disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the <autozonr.com> domain name does not contain changes that would sufficiently distinguish the domain name from the AUTOZONE mark and the domain name is confusingly similar to Complaint’s mark.
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 <autozonr.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AUTOZONE mark in any way. WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent. The WHOIS information of record identifies registrant as “Above.com Domain Privacy.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant contends that Respondent has passively held the <autozonr.com> domain name since it was registered. When a respondent is not using the disputed domain name in connection with an active website, such a respondent may not be able to avail itself of Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant notes Respondent’s domain name resolves to an inactive website and provides a screenshot to further this assertion. The resolving domain for the <autozonr.com> domain name is inactive and the Panel finds this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant claims that when it attempted to resolve this dispute outside of legal proceedings, Respondent only responded to indicate to Complainant that the domain name may be for sale. Offering a confusingly similar domain name for sale can evince bad faith registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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).”). The Panel agrees that Respondent offered to sell the domain name to Complainant and finds this is evidence of bad faith registration under Policy ¶ 4(b)(i).
Complainant argues that Respondent registered and uses the <autozonr.com> domain name in bad faith because Respondent disrupts Complainant’s business and is intentionally attempting to attract for commercial gain Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s AUTOZONE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to disrupt a complainant’s business and mislead users can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Zuccarini, WIPO Case No. D2002-1011 (finding respondent’s intentional registration of domain name <minorleaugebaseball.com> for the express purpose of misdirecting unaware persons mistyping or misspelling the trademark was “clear evidence of exactly the bad faith conduct that the framers of the ICANN UDRP rules had in mind.”). Here, Complainant contends that Respondent’s typo squatting of the disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site, and provides a screenshot of Respondent’s use of the domain name’s resolving webpage. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant contends that by replacing the letter “e” with the letter “r” in the AUTOZONE mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). The Panel finds Respondent’s replacement of a single letter in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent.
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant asserts the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the leading retailer in the field, support this finding. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.) The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the AUTOZONE mark when it registered <autozonr.com> domain name and finds this is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <autozonr.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 9, 2018
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