AutoZone, Inc. v. SZK.com c/o Michele Dinoia
Claim Number: FA0606000741832
Complainant is AutoZone, Inc. (“Complainant”), represented by Wesley C. Achey, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309. Respondent is SZK.com c/o Michele Dinoia (“Respondent”), represented by Valerio Donnini 188, Via P Gobetti, Pescara 65121 Italy.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwautozone.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.
On June 29, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <wwwautozone.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 2, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwautozone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwautozone.com> domain name is confusingly similar to Complainant’s AUTOZONE and AUTOZONE.COM marks.
2. Respondent does not have any rights or legitimate interests in the <wwwautozone.com> domain name.
3. Respondent registered and used the <wwwautozone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone, Inc., is a supplier of automotive parts and accessories. Complainant operates over 3,700 brick and mortar retail stores in the United States, Mexico and Puerto Rico offering automotive parts, accessories and related services. Complainant also sells its automotive parts and accessories online at a website operated through the <autozone.com> domain name, which is registered to Complainant. Complainant holds registrations with the United States Patent and Trademark office for the AUTOZONE (Reg. No. 1,550,569 issued November 3, 1995) and AUTOZONE.COM (Reg. No. 2,449,353 issues May 08, 2001) marks. Complainant utilizes the AUTOZONE and AUTOZONE.COM marks in connection with providing its automobile parts, accessories and services to the public online and at Complainant’s retail stores.
Respondent registered the <wwwautozone.com> domain name on September 9, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which is composed wholly of links to third-party websites. Many of the links are to commercial third-party websites in direct competition with Complainant, for example “Napa auto Parts,” “Auto Parts” and “Car Parts.” Additional links direct Internet users to unrelated third party websites, for example “South Beach Hotels,” “Free Credit Report” and “Christian Singles.”
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the AUTOZONE and
AUTOZONE.COM marks through registration with the USPTO. The Panel finds that such registration is
sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The <wwwautozone.com> domain
name is confusingly similar to Complainant’s AUTOZONE and AUTOZONE.COM
marks. The disputed domain name
contains Complainant’s marks in their entirety, merely adding the prefix
“www.” The prefix “www” followed by a
period, preceding the remainder of a domain name, is the usual way of typing a
domain name into a web browser. Internet
users frequently commit a typing error by accidentally omitting the period
following the “www,” and Respondent’s domain name mimics this common typing
error. The Panel finds that adding the
“www” prefix without a period in order to mimic a common typing error does not
create a distinct domain name, and that the disputed domain name is confusingly
similar to Complainant’s marks. See Oki
Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”); see
also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum
Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF AMERICA because it “takes advantage of a typing
error (eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from the complainant's NEIMAN-MARCUS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the <wwwautozone.com> domain name. Complainant’s assertion constitutes a prima
facie case and shifts the burden to Respondent to demonstrate that
Respondent does have rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). Respondent
had the opportunity to file a Response in order to set forth evidence and
arguments supporting Respondent’s rights or legitimate interests in the
disputed domain name. The Panel may
find that Respondent’s failure to avail itself of the opportunity to respond is
evidence that Respondent lacks rights or legitimate interests in the disputed
domain name. Lacking a Response, the
Panel will evaluate the available evidence to determine whether Respondent has
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Respondent is using the <wwwautozone.com>
domain name to redirect Internet users to Respondent’s website featuring
links to third-party websites.
Respondent’s website includes links to commercial third-party websites
offering automotive parts and accessories in direct competition with
Complainant, as well as third-party websites completely unrelated to
Complainant. Presumably, Respondent
receives pay-per-click referral fees from these links. The Panel finds that such use constitutes
neither a bona fide offering of goods or services as contemplated by
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by
Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see also TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Disney Enters., Inc. v.
Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the
respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names).
There is no available evidence that Respondent is commonly
known by the <wwwautozone.com> domain name. Respondent’s WHOIS information identifies
Respondent as “SZK.com,” a name apparently unrelated to the disputed domain
name. Furthermore, Complainant asserts
without contradiction that Respondent is not sponsored by or affiliated with
Complainant and Respondent does not have permission from Complainant to use
Complainant’s mark in a domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name and thus lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <wwwautozone.com> domain name is confusingly similar to Complainant’s AUTOZONE and AUTOZONE.COM marks. The disputed domain name constitutes a common typing error of Complainant’s marks. Internet users seeking Complainant’s genuine website may easily find themselves redirected to Respondent’s website if they accidentally leave out the period between the “www” prefix and Complainant’s marks. Once Internet users are redirected to Respondent’s website, because of the confusing similarity between the disputed domain name and Complainant’s marks, Internet users may mistakenly believe that Respondent’s website is affiliated with Complainant. Respondent is capitalizing on this confusion by populating its website with links to third-party websites, from which Respondent presumably receives pay-per-click referral fees. The Panel finds that Respondent’s use of a confusingly similar domain name to redirect Internet users to Respondent’s website for Respondent’s financial gain is evidence of bad faith registration and use pursuant to Policy¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent is using the <wwwautozone.com> domain
name, which is confusingly similar to Complainant’s marks, to redirect Internet
users to Respondent’s website prominently featuring links to commercial
third-party websites offering automobile parts and accessories in direct
competition with Complainant. Internet
users seeking Complainant’s genuine website in order to purchase automobile
parts and accessories and finding themselves redirected to Respondent’s website
may follow a link to a competing third-party website, bringing their business
to that competitor. This diversion of
Internet users may result in lost business for Complainant and thus disrupts
Complainant’s business, which the Panel finds to be evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwautozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 21, 2006
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