Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. D-Max Limited
Claim Number: FA1307001511761
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is D-Max Limited (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceautpparts.com> and <advancesutoparts.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2013; the National Arbitration Forum received payment on July 26, 2013.
On July 28, 2013, Fabulous.com pty ltd confirmed by e-mail to the National Arbitration Forum that the <advanceautpparts.com> and <advancesutoparts.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 July 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2013 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@advanceautpparts.com, postmaster@advancesutoparts.com. Also on July 29, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <advanceautpparts.com> and <advancesutoparts.com> domain names are confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <advanceautpparts.com> and <advancesutoparts.com> domain names.
3. Respondent registered and uses the <advanceautpparts.com> and <advancesutoparts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered its ADVANCE AUTO PARTS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267 registered January 4, 1994).
Respondent registered the <advanceautpparts.com> on October 19, 2005, and the <advancesutoparts.com> on October 16, 2005, and uses them to hyperlink to websites that promote various goods, some of which compete with Complainant’s goods.
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.
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.”).
The Panel finds that Complainant’s USPTO registration is a satisfactory showing of Policy ¶ 4(a)(i) rights in its ADVANCE AUTO PARTS mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the 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.”).
Respondent’s <advanceautpparts.com> and <advancesutoparts.com> domain names incorporate nothing more than common misspellings of Complainant’s mark. The Panel notes that the removal of the spaces and the addition of “.com” are irrelevant changes to Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) the panel determined that a domain name was confusingly similar if the only changes made to the complainant’s mark in forming the domain name were the introduction of simple, single-character errors. The Panel likewise finds that the <advanceautpparts.com> and <advancesutoparts.com> domain names are confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not known by these domain names, as noted through the WHOIS information database. Complainant attests that it has not authorized, licensed, or approved of Respondent’s use of the ADVANCE AUTO PARTS mark in domain names. The Panel notes that both domain names list “D-Max Limited” as the WHOIS registrant. In MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) the panel declined to make a finding under Policy ¶ 4(c)(ii) when there was no evidence in the record to suggest that there was even a possibility that the respondent was known by the disputed domain name. Thus, the Panel finds that Respondent is not known by the <advanceautpparts.com> and <advancesutoparts.com> domain names under Policy ¶ 4(c)(ii).
Complainant also claims that Respondent uses the domain names to hyperlink Internet users to websites that promote various goods, some of which compete with Complainant’s ADVANCE AUTO PARTS goods, presumably benefitting from these advertisements. The Panel notes that the <advancesutoparts.com> domain name resolves to a website that promotes hyperlinks such as “Performance Parts” and “Clutch Kits.” In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) the panel found that the use of a confusingly similar domain name to host advertisements related to the complainant’s business did not conform with a Policy ¶ 4(c)(i) bona fide offering, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the <advancesutoparts.com> domain name does not demonstrate rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Complainant provides evidence that Respondent is exploiting Complainant’s affiliate agreement by registering the <advanceautpparts.com> domain name simply to redirect misguided Internet users to Complainant’s website. In Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) the panel found that the respondent lacked any sort of right or legitimate interest in using a confusingly similar domain name to capitalize on the complainant’s affiliate agreements to obtain commissions and other compensation from the complainant. Thus, the Panel finds that Respondent does not have Policy ¶ 4(a)(ii) rights and legitimate interests in using the <advanceautpparts.com>.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant states that Respondent is listing the domain names for sale. The Panel notes that the WHOIS report from “DomainTools” includes a hyperlink suggesting that both of the domain names are indeed for sale. In Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) the panel held that a general offering of a domain name for sale can serve as evidence of Policy ¶ 4(b)(i) bad faith. Therefore, the Panel finds that Respondent’s offer for sale of the disputed domain names iss Policy ¶ 4(b)(i) bad faith.
Complainant next argues that Respondent has been subject to UDRP proceedings in the past, and was found to have acted in bad faith. See LinkedIn Corp. v. D-Max Ltd., FA 1413956 (Nat. Arb. Forum Dec. 10, 2011); see also Vanguard Trademark Holdings USA LLC v. D-Max Ltd., FA 1466780 (Nat. Arb. Forum Nov. 22, 2012); see also U.S. Auto Parts Network, Inc. v. D-Max Ltd., FA 1433959 (Nat. Arb. Forum May 2, 2012). The Panel finds that these prior UDRP proceedings serve as evidence that Respondent has acted in Policy ¶ 4(b)(ii) bad faith in registering the <advanceautpparts.com> and <advancesutoparts.com> domain names. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent’s use of the disputed domain names for hyperlink advertisements to goods that compete with the ADVANCE AUTO PARTS mark also illustrates a bad faith attempt to disrupt Complainant’s business under Policy ¶ 4(b)(iii). In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) the panel found that directly competing hyperlinks may serve as evidence of a respondent’s Policy ¶ 4(b)(iii) bad faith.
Respondent is using the <advancesutoparts.com> domain name to capitalize on the likelihood that Internet users who enter this domain name will believe that they are visiting a website associated with Complainant. The Panel finds that this constitutes Policy ¶ 4(b)(iv) bad faith. See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements).
Respondent is also exploiting Complainant’s affiliate agreement by using the confusingly similar <advanceautpparts.com> domain name to direct Internet users to Complainant’s own websites, further evidence of bad faith under Policy ¶ 4(a)(iii). In Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) the panel agreed that the exploitation of an affiliate agreement is evidence of a respondent’s bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent’s typosquatting is itself evidence of bad faith. Although typosquatting is not explicitly enumerated in the Policy, the totality of the circumstances supports the conclusion that Respondent registered these domain names in Policy ¶ 4(a)(iii) bad faith by typosquatting. See, e.g., 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’”).
The Panel finds 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 <advanceautpparts.com> and <advancesutoparts.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 3, 2013
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