AutoZone, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2205001995026
Complainant is AutoZone, Inc. (“Complainant”), represented by Kathryn K. Van Namen of Butler Snow, LLP, Tennessee, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf (“Respondent”), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozone.us.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on March 22, 2022.
Complainant submitted a Complaint to the Forum electronically on May 4, 2022; the Forum received payment on May 10, 2022.
On May 6, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <autozone.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On May 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@autozone.us.com. Also on May 16, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for the CDRP Dispute Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the 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 is a leading retailer of automotive parts and accessories.
Complainant holds a registration for the service mark AUTOZONE, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,724,931, registered December 15, 2009, and renewed January 8, 2019.
Respondent registered the domain name <autozone.us.com> on or about October 27, 2021.
The domain name is confusingly similar to Complainant’s AUTOZONE mark.
Respondent has not been commonly known by the domain name.
Respondent has no connection or affiliation of any kind with Complainant.
Complainant has not licensed or otherwise authorized Respondent to use the AUTOZONE mark.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’ employment of the domain name disrupts Complainant’s business and diverts its customers for Respondent’s commercial gain.
Respondent registered the domain name with knowledge of Complainant’s rights in the AUTOZONE mark.
Respondent either registered or uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that such mediation must have been terminated prior to the consideration of the Complaint. Complainant has certified in its Complaint that it attempted to participate in the required mediation, and that Respondent failed to appear for that mediation, as a consequence of which the mediation failed.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel may draw upon published UDRP decisions as applicable in rendering its decision in this proceeding.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this administrative proceeding on the basis of Complainant's undisputed representations and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations set out in the Complaint. However, the Panel may deny relief it the 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 has rights in the AUTOZONE service mark sufficient for purposes of Policy 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum December 24, 2018):
Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Iceland). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <autozone.us.com> domain name is confusingly similar to Complainant’s AUTOZONE service mark. The domain name contains the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017), a panel there finding the domain name <danskoshoes.us.com> to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the inclusion in the domain name of the ccTLD “.us” and the gTLD “.com.” See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that … top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to or legitimate interests in the <autozone.us.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it has such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the <autozone.us.com> domain name, that Respondent has no connection or affiliation of any kind with Complainant, and that Complainant has not licensed or otherwise authorized to Respondent to use its AUTOZONE mark. Moreover, the pertinent WHOIS information identifies Respondent only as “Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 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).
See also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name where nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant alleges, without objection from Respondent, that the <autozone.us.com> domain name resolves to a web page by which Respondent attempts to pass itself off as being affiliated with Complainant and which displays pay-per-click links to a third-party website offering automotive products in competition with the business of Complainant, from the operation of which links Respondent profits financially. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018):
Respondent uses the … domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that, as is alleged in the Complaint, Respondent uses the challenged <autozone.us.com> domain name to confuse and divert Complainant’s online customers to its competing website in order to garner illicit financial gain. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, American Council on Education v. Anthony Williams, FA1760954 (Forum January 8, 2018):
Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the … domain name pursuant to Policy ¶ 4(b)(iv)
See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where “Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant‘s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
We are also convinced by the evidence before us that Respondent knew of Complainant and its rights in the AUTOZONE mark when it registered the <autozone.us.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Univision Comm. Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel therefore finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <autozone.us.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 20, 2022
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