Aftermarket Auto Parts Alliance, Inc. v. This Domain for Sale, Toll Free: 866-822-9073 Worldwide: 339-222-5132 a/k/a BuyDomains.com
Claim Number: FA1202001428939
Complainant is Aftermarket Auto Parts Alliance, Inc. (“Complainant”), represented by Harry B. Ray of Harry B. Ray & Associates, PLLC, Tennessee, USA. Respondent is This Domain for Sale, Toll Free: 866-822-9073 Worldwide: 339-222-5132 a/k/a BuyDomains.com (“Respondent”), represented by Erik S. Zilinek of NameMedia, Inc., Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masterparts.org>, registered with Azdomainz, LLC.
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 Nelson A. Diaz (Ret.) Chair, Sandra J. Franklin, Honorable Daniel B. Banks Jr., (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2012; the National Arbitration Forum received payment on February 9, 2012.
On February 10, 2012, Azdomainz, LLC confirmed by e-mail to the National Arbitration Forum that the <masterparts.org> domain name is registered with Azdomainz, LLC and that Respondent is the current registrant of the name. Azdomainz, LLC has verified that Respondent is bound by the Azdomainz, LLC 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 February 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2012 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@masterparts.org. Also on February 14, 2012, 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.
A timely Response was received and determined to be complete on March 6, 2012.
On March 14, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz (Ret.) Chair, Sandra J. Franklin, Honorable Daniel B. Banks Jr., (Ret.) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Aftermarket Auto Parts Alliance, Inc., owns the following applicable trademark registrations with the United States Patent and Trademark Office ("USPTO"): PARTS MASTER (e.g., Reg. 3,257,746 registered July 3, 2007). Complainant also owns several international trademark registrations for the PARTS MASTER mark, the earliest of which is with the Republic of Suriname Bureau of Intellectual Property (“SBIP”) (Reg. No. 17,603 registered December 28, 2000).
Respondent registered the <masterparts.org> domain name on September 30, 2009. The disputed domain name is confusingly similar to Complainant’s mark. Respondent is not commonly known by the disputed domain name and is not commonly known by the domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name where Respondent is promoting third-parties in competition with Complainant. Respondent’s attempt to sell the domain name registration for $4,588 is evidence of its bad faith registration and use of the domain name.
Respondent registered and is using the domain name in bad faith in order to prevent the owner of the trademark, Complainant, from reflecting its mark in a corresponding domain name, and has engaged in a pattern of such bad faith registrations. Respondent registered the disputed domain name in bad faith in order to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the endorsement of the resolving website.
B. Respondent
The disputed domain name is not confusingly similar to the marks presented by Complainant as the domain name consists of a transposition of Complainant’s non-exclusive, non-famous, non-fanciful mark.
Complainant has not shown that any consumers would confuse PARTS MASTER with the disputed domain name. Respondent has rights in the disputed domain name as it consists of a common two-word phrase and the corresponding website provides Internet users with advertising and information consistent with the ordinary meaning of the phrase created in the domain name. ICANN panels have recognized the principal that the mere ownership of a domain name comprising a common word or phrase, or a combination of common words, should, in and of itself, establish an owner’s rights and legitimate interest in the domain name. Numerous third parties use the term “Master Parts,” thereby showing no link to Complainant’s mark or products.
The sale of domain names has been found to constitute a bona fide offering of goods or services where a respondent is unaware of a party’s rights in a mark. The disputed domain name was not registered for the purpose of selling or otherwise transferring it to any particular individual or entity, including Complainant and its competitors, and Complainant has failed to show that Respondent registered the domain name primarily for the purpose of selling it to the owner of a trademark or with Complainant’s trademark in mind. Neither registrations nor general offers to sell domain names that consist of generic, common, or descriptive terms can be considered acts of bad faith.
Respondent did not register the domain name at issue in order to prevent the owner of a mark from reflecting that mark in a domain name because the disputed domain name is not compromised of Complainant’s mark, but a patently dissimilar phrase subject to widespread third party use.
Respondent has not registered or used the domain name to disrupt the business of a competitor as Respondent is not a competitor of Complainant. Respondent has created no likelihood of confusion with Complainant’s business as the domain name is completely dissimilar from Complainant’s mark. Complainant has proceeded in bad faith in the filing of this action and should be found to have engaged in reverse domain name hijacking.
Complainant has not satisfied Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), nor Policy ¶ 4(a)(iii).
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:
(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.
(4) 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."
Respondent wholly disputes that the <masterparts.org> domain name is confusingly similar to Complainant’s PARTS MASTER mark. Respondent argues that Complainant does not own any rights in the phrase, “master parts,” and that this phrase is separate and distinct in nature to Complainant’s mark. Respondent contends that the phrase used in its domain name is completely dissimilar and holds a distinct meaning from that of Complainant’s PARTS MASTER mark. Further, Respondent refutes Complainant’s premise and case citations in reference to the transposition of words of a mark by stating that the change here results in a common phrase used by many other third-parties, which would deny Complainant’s assertions of distinctiveness. The Panel notes that Complainant’s USPTO registration disclaims the use of the term PARTS outside the presentation within the trademark. The Panel agrees with Respondent and finds that Complainant has failed to show that the disputed domain name is confusingly similar to a mark in which Complainant holds rights under Policy ¶ 4(a)(i). See FloridaFirst Bank v. Carlson, FA 143677 (Nat. Arb. Forum Apr. 10, 2003) (holding that as the complainant disclaimed the exclusive right to use “BANK”, apart from the FLORIDAFIRST BANK mark, the validity of the mark was to be determined by viewing the trademark as a whole and not just the words “FloridaFirst.” Hence, when viewing the complainant’s FLORIDAFIRST BANK mark as a whole, the respondent’s <floridafirst.com> domain name was not confusingly similar to the registered mark); see also Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”). Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark, the Panel can decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). Respondent claims that its use of the disputed domain name clearly falls within Policy ¶ 4(c)(i). Respondent asserts that it acquired the domain name on September 30, 2009 when it was allowed to expire by the previous owner. Respondent argues that, from that day forward, it has used the disputed domain name to provide information and advertising “consistent with the phrase’s ordinary meaning.” Respondent argues that such use of domain name has been found to be a bona fide offering of goods and services under the Policy. The Panel agrees and finds that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) through its use of the disputed domain name for an advertising venture. See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name, which was comprised of generic terms, as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent also asserts that the sale of domain names containing generic terms is a bona fide offering of goods or services. The Panel agrees and finds that Respondent has rights and legitimate interests in the domain name at issue under Policy ¶ 4(a)(ii), where it purports to be a generic domain name reseller. See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names); see also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (The panel found for the respondent, who was in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties, and developing websites using those domain names for clients. The respondent rebutted the argument that it had no legitimate interest in the domain name <craftwork.com> since the name had not acquired distinctiveness, and instead, was merely generic and descriptive at the time of registration.).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Because the Panel concludes that Respondent has rights or legitimate interests in the <masterparts.org> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Further, Respondent argues that there is no evidence indicating that it registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or its competitors. Respondent contends that it has posted the domain name for sale to the general public, not to any particular entity. Respondent alleges that it did not even know about Complainant’s trademark until November of 2011 when contacted by Complainant about the disputed domain name, making it impossible for it to have registered the domain name with Complainant or its mark in mind. The Panel notes that Respondent has stated that it buys domain names considered to be generic so that it may resell them at a later date. The Panel finds that Respondent did not register the domain name primarily for the purpose of selling the domain name to Complainant or its competitors under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names).
Respondent argues, although Complainant does not, that it did not register the domain name to disrupt the business of a competitor under Policy ¶ 4(b)(iii) because it and Complainant are engaged in distinctly different businesses. The Panel agrees and finds accordingly under Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <masterparts.org> domain name be WITH Respondent.
Honorable Nelson A. Diaz (Ret.) Chair, Sandra J. Franklin, Honorable Daniel B. Banks Jr., (Ret.) Panelists
Dated: March 16, 2012
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