O'Reilly Automotive, Inc. v.
Claim Number: FA0705000982192
Complainant is O'Reilly Automotive, Inc. (“Complainant”), represented by Caroline
B. Stefaniak, of Husch & Eppenberger, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <orielyautoparts.com>, registered with CapitolDomains, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2007.
On May 11, 2007, CapitolDomains, LLC confirmed by e-mail to the National Arbitration Forum that the <orielyautoparts.com> domain name is registered with CapitolDomains, LLC and that Respondent is the current registrant of the name. CapitolDomains, LLC has verified that Respondent is bound by the CapitolDomains, LLC 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 May 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2007 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@orielyautoparts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <orielyautoparts.com> domain name is confusingly similar to Complainant’s O’REILLY AUTO PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <orielyautoparts.com> domain name.
3. Respondent registered and used the <orielyautoparts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, O'Reilly
Automotive, Inc., owns and operates a chain of retail stores selling automotive
parts. Complainant maitains over 1,400
stores in 25 states across the
Respondent registered the <orielyautoparts.com> domain name
on
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.
Through registration with the USPTO, the Panel finds Complainant
has established rights in the O’REILLY AUTO
PARTS mark sufficient to satisfy Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
The Panel finds that Respondent’s <orielyautoparts.com> domain name is confusingly similar to Complainant’s O’REILLY AUTO PARTS mark pursuant to Policy ¶ 4(a)(i). Although the disputed domain name is not identical to Complainant’s O’REILLY AUTO PARTS mark, namely, the omission of the apostrophe between the “o” and the “r;” the inversion of the “i” and “e;” and the exclusion of an “l,” these changes are not sufficient to overcome the confusing similarity between Respondent’s <orielyautoparts.com> domain name and Complainant’s O’REILLY AUTO PARTS mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Pier 1 Imports Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).
Moreover, Respondent’s <orielyautoparts.com>
domain name remains phonetically consonant with Complainant’s O’REILLY AUTO
PARTS mark, further evidencing confusing similarity. See
Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i).
Before requiring Respondent to establish rights or legitimate interests in the disputed domain name, Complainant must first set forth a prima facie case demonstrating Respondent’s lack thereof. See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations). Finding that Complainant has set forth the initial showing, the Panel now considers whether Respondent has put forth any evidence demonstrating rights or legitimate interests in the <orielyautoparts.com> domain name.
In light of Respondent’s failure to respond or put forth any evidence evidencing Respondent’s rights or legitimate interests in the <orielyautoparts.com> domain name, the Panel infers Respondent holds no rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will now determine whether any evidence in the record indicates Respondent has rights or legitimate interests in the <orielyautoparts.com> domain name.
Here, the record lacks any evidence suggesting Respondent is connected with or has permission from Complainant to register a domain name incorporating Complainant’s O’REILLY AUTO PARTS mark. Additionally, Respondent’s WHOIS information does not lead the Panel to conclude Respondent is commonly known by the <orielyautoparts.com> domain name. The Panel, therefore, finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Moreover, Respondent’s <orielyautoparts.com> domain name currently resolves to a list of third-party commercial links both related to the automotive industry, including Complainant’s competitors, and links unrelated to Complainant. The Panel finds that such use by Respondent does not evidence a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); 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).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent’s registration and use of the <orielyautoparts.com> domain name to direct Internet users away from Complainant and to Respondent’s own third-party links page, including links to Complainant’s competitors, amounts to bad faith use and registration pursuant to Policy ¶ 4(b)(iii) through the intentional disruption of Complainant’s automotive retail business by Respondent. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Likewise, the Panel infers Respondent’s use of a domain name confusingly similar to Complainant’s O’REILLY AUTO PARTS mark to resolve to a page of third-party links is an intentional diversion by Respondent in order to generate click-through fees as Internet users pass through Respondent’s site searching for Complainant’s goods and services, conferring commercial gain on Respondent which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel concludes that Complainant has satisfied 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 <orielyautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 18, 2007
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