AutoZone, Inc. v. Speeed Gorjala
Claim Number: FA2210002016788
Complainant is AutoZone, Inc. (“Complainant”), represented by Lauren N. Jones of Butler Snow, LLP, Tennessee, USA. Respondent is Speeed Gorjala (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <speedautozone.com>, registered with GoDaddy.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 19, 2022; Forum received payment on October 19, 2022.
On October 20, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <speedautozone.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@speedautozone.com. Also on October 20, 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 November 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 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, 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
i) Complainant is the largest retailer of automotive parts and accessories in the United States. Complainant claims rights in the AUTOZONE mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) and other agencies worldwide (e.g., Reg. No. 1,550,569, registered August 1, 1989). The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the AUTOZONE mark in its entirety.
ii) Respondent lacks rights or legitimate interests in the disputed domain name because it was registered decades after the mark was first used and Respondent is not commonly known by the name; the registrant information was also concealed by a privacy service. Respondent has made no legitimate noncommercial or fair use of the disputed domain name, as the resolving webpage is nearly identical to a competing automotive parts retailer and features competing automotive products for sale, confusing customers and diverting traffic from Complainant’s own website.
iii) Respondent has registered and is using the disputed domain name in bad faith. Because of the fame and notoriety of the AUTOZONE mark, Respondent knew of Complainant’s trademark rights and intended to cause confusion through using disputed domain name. Respondent had no legitimate reason to register the disputed domain name other than to take advantage of Complainant’s famous AUTOZONE mark. The disputed domain name fully incorporates Complainant’s mark and the resolving webpage advertises products that compete with Complainant’s own goods and services associated with the mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on November 11, 2021.
2. Complainant has established rights in the AUTOZONE mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) and other agencies worldwide (e.g., Reg. No. 1,550,569, registered August 1, 1989).
3. The disputed domain name’s resolving website advertises automotive parts and accessories in a format mirroring a competing auto parts 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(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”).
Complainant claims rights in the AUTOZONE mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 1,550,569, registered August 1, 1989). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the AUTOZONE mark with the USPTO, the Panel finds Complainant has demonstrated rights in the AUTOZONE mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <speedautozone.com> is confusingly similar to its AUTOZONE mark because it incorporates the mark in its entirety. The Panel notes that the disputed domain name incorporates Complainant’s mark in its entirety and only adds the descriptive word “speed” and the “.com” gTLD. The use of a mark in its entirety with the mere addition of a descriptive term or a gTLD fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 contends that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and used a privacy service for registration. When a response is lacking, WHOIS information may be used to determine whether a Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for disputed domain name lists the registrant as “Speeed Gorjala.” Use of a privacy service is further evidence that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Therefore, the Panel finds Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent does not make a legitimate noncommercial or fair use of the disputed domain name as Respondent operates a website mimicking a competitor and displays competing goods for sale, which diverts traffic from Complainant’s own website. Previous panels have determined that when a respondent diverts Internet users from a complainant’s site and purports to offer competing goods for sale, it is not a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides evidence that the resolving webpage mirrors a competitor, with the same layout, color scheme, and customer reviews, as well as advertises competing goods. Therefore, the Panel finds that Respondent lacks a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)((iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent has intentionally registered the disputed domain name that fully incorporates the AUTOZONE mark and has used to promote related goods and services that compete with the very goods and services Complainant sells under its AUTOZONE mark. Respondent has chosen to register a confusingly similar domain name to divert Internet traffic away from Complainant’s website and disrupt Complainant’s business. The Panel is of the view that the use of a domain name incorporating a complainant’s mark for the websites of competitors of the complainant constitutes bad faith registration and use of the disputed domain name. See Baylor University v. Domains by Proxy, Inc. Forum, Claim No. FA- 0802001145651 (May 26, 2008) (“Respondent’s registration of domain names that incorporate the BAYLOR marks which are used for the websites of competitors of Baylor . . . is registration and use in bad faith.”). The Panel recalls that Complainant has provided screenshots of the disputed domain name’s resolving website which advertises automotive parts and accessories in a format mirroring a competing auto parts business. In light of the inherent use of Complainant’s AUTOZONE mark and the website’s similarities to that of the competitor, the Panel finds that Internet users are likely to get confused as to the source of the offered goods. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further contends that Respondent registered and is using the disputed domain name in bad faith because it had knowledge of Complainant’s trademark rights at the time of registering the disputed domain name. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the AUTOZONE mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <speedautozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 14, 2022
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