DECISION
AutoZone IP LLC v. Shu Lin
Claim Number: FA2404002091274
PARTIES
Complainant is AutoZone IP LLC ("Complainant"), represented by Gregory J. Krabacher of Epstein Becker & Green, P.C., Ohio, USA. Respondent is Shu Lin ("Respondent"), Dalian, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <auatozone.com>, registered with Above.com Pty Ltd.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 1, 2024. Forum received payment on April 1, 2024.
On April 2, 2024, Above.com Pty Ltd. confirmed by e-mail to Forum that the <auatozone.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 April 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2024 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@auatozone.com. Also on April 8, 2024, 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 April 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Since 1987, Complainant, AutoZone IP LLC, has sold automotive parts and accessories under the AUTOZONE trademark, in which it has rights through numerous registrations, including with the United States Patent and Trademark Office ("USPTO"). Through licensed affiliates, Complainant currently owns and operates more than 7,000 AUTOZONE branded retail stores. Since 1997 Complainant has operated the website at <autozone.com>. Respondent's typosquatted <auatozone.com> domain name is confusingly similar to Complainant's AUTOZONE mark, which is famous.
Respondent lacks rights or legitimate interests in the typosquatted <auatozone.com> domain name since it was originally registered on March 15, 2010, more than twenty years after Complainant's first use of the AUTOZONE mark. Respondent has no connection or affiliation with Complainant, nor has it at any time received from Complainant a license or consent to use the AUTOZONE mark in a domain name or any other manner. There is no evidence to suggest that Respondent is commonly known by that name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to direct users to a website that encourages visitors to download malware. Further, Respondent used a privacy service to conceal its identity.
Respondent registered the typosquatted <auatozone.com> domain name in bad faith with actual knowledge of Complainant's rights in the AUTOZONE mark and uses it in bad faith to trick Internet users who are searching for Complaint's website into visiting Respondent's website, which encourages visitors to download malware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(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 or legitimate interests in respect of the domain name; and
(iii) 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 as 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').
Identical and/or Confusingly Similar
Complainant has shown that it has rights by assignment in the AUTOZONE mark through numerous registrations, including with the USPTO (e.g., Reg. No. 2,721,079, registered on June 3, 2003). The Panel finds Respondent's <auatozone.com> domain name to be confusingly similar to Complainant's mark, only differing by the addition of the letter "a" after the letter "u", which does nothing to distinguish the domain name from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
According to several Whois records shown in a Domain Tools report exhibited to the Complaint, the <auatozone.com> domain name was originally registered on October 7, 2007 in the name of Keyword Marketing, Inc. It expired in 2009 and was re-registered on March 15, 2010 in the name Above.com Domain Name Privacy, showing the registrant as having an address in Australia. From March 17, 2019, all details of the registrant were redacted for privacy. From March 17, 2021 the registrant's State/Province is shown as Dalian, China, where the current registrant is located. It thus appears that Respondent acquired the domain name on or shortly before March 17, 2021.
Whether Respondent acquired the domain name in 2021 or in 2010, Complainant has shown that, long before March 15, 2010, its AUTOZONE mark had become very well-known worldwide in the field of automotive parts and accessories. The domain name resolves to a website displaying a click-through link to "Auto Zone Auto Parts". The Panel is not able to determine whether the domain name encourages visitors to download malware.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <auatozone.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
Typosquatting is itself evidence of bad faith registration and use. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 1683305 (Forum Aug. 11, 2016) (noting that "[t]yposquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark.").
Further, the circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's very well-known AUTOZONE mark when Respondent registered the typosquatted <auatozone.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's website and of the goods or services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established 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 <auatozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 1, 2024
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