ALLDATA LLC v. Bo Wang
Claim Number: FA0905001265165
Complainant is ALLDATA
LLC (“Complainant”), represented by Jason
D. Rosenberg, of Alston & Bird, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alldatadi.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 29, 2009.
On May 29, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <alldatadi.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 June 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 2009 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@alldatadi.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <alldatadi.com> domain name is confusingly similar to Complainant’s ALLDATA mark.
2. Respondent does not have any rights or legitimate interests in the <alldatadi.com> domain name.
3. Respondent registered and used the <alldatadi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a wholly-owned subsidiary of AutoZone, Inc. and provides automotive repair information and solutions to the professional automotive service industry. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALLDATA mark (i.e., Reg. No. 1,556,655 issued September 19, 1989). One of Complainant’s products is ALLDATA DIY, which can be found at Complainant’s <alldatadiy.com> domain name.
Respondent registered the <alldatadi.com> domain name on December 25, 2009. The disputed domain name resolves to a website featuring a search engine and links to Complainant’s competitors.
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.
Previous panels have found that a complainant establishes rights in a mark through registration of the mark a governmental trademark authority. Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the ALLDATA mark through its registration with the USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <alldatadi.com> domain name is
confusingly similar to Complainant’s ALLDATA mark. Respondent’s disputed domain name
incorporates the full ALLDATA mark and simply adds two letters “di” and the
generic top-level domain “.com.” The
Panel finds that the addition of two letters does not distinguish the disputed
domain name from Complainant’s mark under Policy ¶ 4(a)(i) because the addition
of these letters relate to Complainant’s DIY product. Furthermore, the Panel finds that a top-level
domain name is irrelevant in a Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum
Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly
similar to the complainant’s AOL mark because “…the addition of a string of
indiscriminate letters to a famous mark in a second level domain does not
differentiate the domain name from the mark.”); see also
For these reasons, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <alldatadi.com> domain name. Past panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to the Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <alldatadi.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s <alldatadi.com> domain name resolves to a website featuring a search engine and advertisement links. Some of the advertisements relate to Complainant’s competitors. The Panel assumes Respondent commercially benefits from its use of the search engine and links or the disputed domain name. Respondent’s use of a domain name that is confusingly similar to the ALLDATA mark to redirect Internet users to third-party websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds no evidence in the record, and no evidence submitted by Respondent, demonstrating that Respondent is commonly known by the <alldatadi.com> domain name. Complainant asserts that it has never authorized Respondent to use the ALLDATA mark. The WHOIS information identifies Respondent as “Bo Wang.” Therefore, the Panel fails to find that Respondent has established rights or legitimate interests in the <alldatadi.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <alldatadi.com> domain
name, which is confusingly similar to Complainant’s ALLDATA mark, to redirect
Internet users to a website featuring a search engine and advertisement
links. Some of the advertisement links
are related to Complainant’s competitors.
Therefore, the Panel finds that Respondent’s use constitutes disruption
and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
The Panel infers Respondent receives click-through fees and
thus profits from its use of the disputed domain name. The <alldatadi.com> domain name
is confusingly similar to Complainant’s mark and Internet users may become
confused as to Complainant’s affiliation with Respondent’s resulting
website. Therefore, the Panel finds
Respondent’s attempt to profit from the likelihood of confusion created by its
use of the confusingly similar disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922
(Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net>
domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to the respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <alldatadi.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 6, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum