Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1104001383141
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), represented by Paul Keating of Law.es, Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advancautoparts.com> and <advanceautparts.com>, registered with Fabulous.Com Pty Ltd.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2011; the National Arbitration Forum received payment on April 12, 2011.
On April 12, 2011, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <advancautoparts.com> and <advanceautparts.com> domain names are registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.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 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2011 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@advancautoparts.com and postmaster@advanceautparts.com. Also on April 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" 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, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advancautoparts.com> and <advanceautparts.com> domain names are confusingly similar to Complainant’s ADANCED AUTO PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <advancautoparts.com> and <advanceautparts.com> domain names.
3. Respondent registered and used the <advancautoparts.com> and <advanceautparts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC, is a large retailer of automotive replacement parts and accessories that maintains over 3,563 stores in thirty-nine states with 51,000 employees in the United States, Puerto Rico, and the Virgin Islands. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ADVANCED AUTO PARTS mark (e.g., Reg. No. 1,815,267 issued January 4, 1994).
Respondent, Privacy Ltd. Disclosed Agent for YOLAPT, registered the <advancautoparts.com> and <advanceautparts.com> domain names on April 27, 2004 and October 11, 2004, respectively. Respondent’s disputed domain name resolves to a website that features a search engine and displays third-party links to competing and unrelated websites.
Complainant presents evidence to show that Respondent has been the named respondent in many previous UDRP cases in which Respondent was ordered to transfer the domain names to the respective complainants. See Sears Brands, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1074743 (Nat. Arb. Forum Oct. 17, 2007); see also Hot Topic, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301630 (Nat. Arb. Forum Feb. 17, 2010); see also Cabela’s, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301918 (Nat. Arb. Forum Feb. 24, 2010).
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.
The Panel finds that Complainant has established rights in its ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,815,267 issued January 4, 1994). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the <advancautoparts.com> and <advanceautparts.com> domain names are confusingly similar to Complainant’s ADANCE AUTO PARTS mark. Complainant first notes that the relevant comparison involves the second-level portion of the domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Further, Complainant notes that the domain names merely remove the letter “e” from the <advancautoparts.com> domain name, and the letter “o” from the <advanceautparts.com> domain name, in addition to removing the spaces between the terms of the mark. Complainant contends that the registrations render the domain names confusingly similar to Complainant’s mark. The Panel agrees and finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <advancautoparts.com> and <advanceautparts.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <advancautoparts.com> and <advanceautparts.com> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant further contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain names identifies Respondent as “Privacy Ltd. Disclosed Agent for YOLAPT,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant submits evidence to show that the disputed domain names resolve to websites that feature a search engine and various third-party links to competing and unrelated companies. Complainant alleges that Respondent receives commercial benefit from such use by utilizing pay-per-click links. The Panel finds that such use of the domain names is evidence that Respondent is not using them for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
Lastly, Complainant contends that Respondent’s registration of the <advancautoparts.com> and <advanceautparts.com> domain names constitutes typosquatting, and that as such Respondent does not have rights or legitimate interests in the domain names. The Panel agrees and finds that Respondent’s registration of the domain names containing misspelled versions of Complainant’s mark is further evidence that Respondent does not have rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant presents evidence to show that Respondent has been the named respondent in many previous UDRP cases in which it was ordered to transfer the domain names to the respective complainants. See Sears Brands, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1074743 (Nat. Arb. Forum Oct. 17, 2007); see also Hot Topic, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301630 (Nat. Arb. Forum Feb. 17, 2010); see also Cabela’s, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301918 (Nat. Arb. Forum Feb. 24, 2010). Complainant argues, and the Panel agrees that such a pattern of bad faith registrations is evidence of bad faith registration and use in the present case pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Further, Complainant has argued that Respondent is using the disputed domain names to resolve to a website that features third-party links to both unrelated and competing businesses. The Panel finds that such use of the confusingly similar domain names is further evidence that Respondent registered and is using the domain names in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also maintains that Respondent receives commercial compensation from its use of the disputed domain names through the receipt of click-through or affiliate fees. Complainant contends that Respondent’s commercial profit from its use of misspelled versions of Complainant’s mark is also evidence that Respondent registered and is using the domain names in bad faith. The Panel agrees and finds that Respondent registered and is using the domain names in bad faith under Policy ¶ 4(b)(iv), where it is presumably profiting from its use of click-through links posted on its websites. See 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Lastly, Complainant argues that Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111,D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent "created 'a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith."). The Panel agrees and determines that Respondent’s typosquatting is further evidence of bad faith registration and use under Policy ¶ 4(a)(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 <advancautoparts.com> and <advanceautparts.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: May 25, 2011
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