AutoZone Parts, Inc. v. Li Wenhan
Claim Number: FA1904001840813
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kathryn K. Van Namen of Butler Snow, LLP, United States. Respondent is Li Wenhan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zone-auto.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2019; the Forum received payment on April 30, 2019.
On May 7, 2019, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <zone-auto.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 May 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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 email@example.com. Also on May 13, 2019, 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 June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that, while the Complaint before us was submitted in English, the registration agreement governing the domain name here in issue is written in Chinese. In ordinary circumstances, Rule 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”) would require that this proceeding be conducted in Chinese, the language of the registration agreement. However, Rule 11 also provides that, in appropriate circumstances, the Panel has discretion to conduct this proceeding in a language other than that of the pertinent registration agreement.
In determining the appropriate language of the proceeding, the Panel looks to the provisions of Rule 10(b) and (c), which counsel that each party must be given a fair opportunity to present its case, and that the proceeding must be conducted with due expedition. In reaching an appropriate determination on this question, we may take into account all available evidence suggesting that the parties share an adequate familiarity with a language suitable to the circumstances of the case. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (the panel there exercising discretion in deciding that the language of the proceeding be English, contrary to the pertinent registration agreement, based on evidence that the respondent had command of English).
The Panel may also weigh the relevant costs, in terms of both time and economic expense, which would be incurred in enforcing the Chinese language agreement, to the extent that it might result in prejudice to either party. See, for example, Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that a UDRP proceeding should be conducted in English, and noting that: “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case”).
With all of this in mind, we observe that:
i. the domain name <zone-auto.com> is rendered in English;
ii. the pertinent WHOIS information does not recite any contact information for Respondent, and so does not confirm that Respondent resides in China or any other country in which Chinese might be a dominant or prominent language;
iii. Complainant is located in the United States;
iv. the Complaint filed herein is submitted in English;
v. Respondent has failed to respond to the Complaint; and
vi. it would be time-consuming and expensive for Complainant to resubmit its Complaint and related submissions in Chinese.
In light of these considerations, we conclude that sufficient evidence has been presented by Complainant to justify permitting this proceeding to be conducted in English. Accordingly, all aspects of this proceeding shall be conducted in English.
Complainant, operating under the AUTOZONE mark, is the largest retailer of automotive parts and accessories in the United States.
Complainant holds a registration for the AUTOZONE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,724,931, registered as of December 15, 2009, renewed as of January 8, 2019.
Respondent registered the domain name <zone-auto.com> on or about February 2, 2019.
The domain name is confusingly similar to Complainant’s AUTOZONE mark.
Respondent has no connection or affiliation with Complainant.
Complainant has never given Respondent a license or other consent to use the AUTOZONE mark.
Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent uses the domain name to display pornographic images and other sexually explicit content.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent was well-aware of Complainant’s rights in the AUTOZONE mark when it registered the domain name.
Respondent registered and is using the domain in bad faith.
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the AUTOZONE service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately proved its rights under Policy ¶4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <zone-auto.com> domain name is confusingly similar to Complainant’s AUTOZONE service mark. The domain name contains the mark in its entirety, with only the reversal of its terms and the insertion of a hyphen, plus the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, T. Rowe Price Group, Inc. v. Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED, FA 1705342 (Forum January 16, 2017):
Respondent’s … domain name] … differs from the mark by inverting the words … in the mark. Inverting the words in a mark is not sufficient to overcome a finding of confusing similarity.
See also ADP, LLC. v. Ella Magal, FA 1773958 (Forum August 2, 2017):
Respondent’s … domain name appropriates the dominant portion of Complainant’s … mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the … mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <zone-auto.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <zone-auto.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the AUTOZONE service mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Li Wenhan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain name to display pornographic images and other sexually explicit content. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain as provided in those subsections of the Policy. See, for example, Altria Group, Inc. and Altria Group Distribution Co. v. xiazihong, FA1732665 (Forum July 7, 2017) (finding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy”).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <zone-auto.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum January 31, 2014):
Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the … domain name to tarnish Complainant’s … mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.
This is so even where the challenged use of the domain name is not directly competitive with Complainant’s business. See PopSockets LLC v. san mao, FA 1740903 (Forum August 27, 2017) (finding disruption of a UDRP complainant’s business, even where the disruptive website content was not directly competitive with the business of that complainant, it being nonetheless sufficient to establish bad faith registration and use under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the AUTOZONE mark at the time Respondent registered the <zone-auto.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):
The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration … under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ (4)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <zone-auto.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 12, 2019
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