AutoZone, Inc. v. Serg
Claim Number: FA2208002009969
Complainant is AutoZone, Inc. (“Complainant”), represented by Lauren N. Jones of Butler Snow, LLP, Tennessee, USA. Respondent is Serg (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <auto-zone.us>, registered with Sav.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 26, 2022; Forum received payment on August 29, 2022.
On August 29, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <auto-zone.us> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 August 31, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2022 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@auto-zone.us. Also on August 31, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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 contends as follows:
Complainant, AutoZone, Inc., offers automotive parts and accessories retail service.
Complainant rights in the AUTOZONE mark are based upon registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 1,550,569, registered August 1, 1989).
Respondent’s <auto-zone.us> domain name is confusingly similar to Complainant’s mark because the at-issue domain name contains the AUTOZONE mark in its entirety, merely adding the country code top-level domain (“ccTLD”) “.us” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <auto-zone.us> domain name. Respondent is not licensed or authorized to use Complainant’s AUTOZONE mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to pass off as Complainant.
Respondent registered or uses the <auto-zone.us> domain name in bad faith. Respondent uses the at-issue domain name to cause initial interest confusion. Respondent uses the domain name to compete with Complainant. Respondent registered the at-issue domain name with actual or constructive knowledge of Complainant’s rights in the AUTOZONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in AUTOZONE.
Respondent is not affiliated with Complainant and is not authorized to use the AUTOZONE mark in any capacity.
The at‑issue domain name was registered after Complainant acquired trademark rights in AUTOZONE.
Respondent uses the at-issue domain name to address a website that mimics Complainant’s genuine AUTOZONE website.
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.
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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for AUTOZONE, as well as any of its national registrations for such mark worldwide, establishes Complainant’s rights in AUTOZONE for the purposes of 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)); see also, Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
The at-issue domain name contains Complainant’s AUTOZONE trademark with a hyphen inserted between its syllables with all followed by the “.us” top level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <auto-zone.us> domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <auto-zone.us> domain name is confusingly similar to Complainant’s AUTOZONE trademark. See Apex Brands, Inc. v. Chen xiansheng / chenxiansheng, FA2206002001175 (Forum Aug. 1, 2022) (Finding <gear-wrench.com> “confusingly similar to Complainant’s mark because it incorporates the GEARWRENCH mark in its entirety and merely adds a hyphen, which does nothing to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <auto-zone.us> indicates that “Serg” is the domain name’s registrant. There is nothing in the record indicating that Respondent is otherwise known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by <auto-zone.us> or AUTOZONE under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <auto-zone.us> domain name to pass itself off as Complainant and address a website with the look and feel of Complainant’s genuine website. Such use of the domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor of a non-commercial or fair use under Policy ¶ 4(c)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue <auto-zone.us> domain name to pass itself off as Complainant. Notably, Respondent’s <auto-zone.us> website mimics Complainant’s genuine website in form and content and engages in competition on with Complainant. Such use of the domain name is disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also, Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts).
Moreover, Respondent had actual knowledge of Complainant’s rights in the AUTOZONE mark when it registered <auto-zone.us> as a domain name. Respondent’s actual knowledge is evident from the notoriety of the AUTOZONE trademark and from Respondent’s use of <auto-zone.us> to address a website that mimics Complainant’s genuine website. Respondent’s registration and use of the <auto-zone.us> domain names with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (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 <auto-zone.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 30, 2022
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