Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v ICS INC.
Claim Number: FA1307001511762
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adbanceautoparts.com>, <adcanceautoparts.com>, <advancesautoparts.com>, <advanvceautoparts.com>, and <advsnceautoparts.com>, registered with Tucows, 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.
Paul M. DeCicco, 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 26, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <adbanceautoparts.com>, <adcanceautoparts.com>, <advancesautoparts.com>, <advanvceautoparts.com>, and <advsnceautoparts.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 August 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@adbanceautoparts.com, postmaster@adcanceautoparts.com, postmaster@advancesautoparts.com, postmaster@advanvceautoparts.com, postmaster@advsnceautoparts.com. Also on August 6, 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 September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the ADVANCE AUTO PARTS mark in connection with the operation of auto part retail stores. Complainant has registered this mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,847,137 registered July 26, 1994).
Respondent has registered the <adbanceautoparts.com>, <adcanceautoparts.com>, <advancesautoparts.com>, <advanvceautoparts.com>, and <advsnceautoparts.com> domain names, each of which transposes the letters in the mark or merely introduces a random indiscriminate character into the mark. The introduction of the generic top-level domain (“gTLD”) “.com” is not relevant.
Respondent is not commonly known by the domain names. The WHOIS information provides no reason to connect Respondent to the names. Complainant has not otherwise authorized, licensed, or permitted Respondent to use the ADVANCE AUTO PARTS mark in domain names.
Respondent uses some of the domain names to send Internet users to Complainant’s competitors. Respondent has listed some of the domain names for sale. Respondent is a serial cybersquatter and has had many UDRP decisions decided against it. Respondent hopes to disrupt Complainant’s business by hosting competitive hyperlinks. Respondent seeks to capitalize on the likelihood of confusion that Internet users will face in associating the content of the competing hyperlinks with Complainant’s business. Respondent uses some of the domain names to send Internet users to Complainant’s website in an attempt to exploit Complainant’s affiliate program. Respondent’s typosquatting is in itself evidence of bad faith registration. Respondent had actual knowledge of Complainant’s rights, evidenced through Respondent’s enrollment in Complainant’s affiliate agreement.
Respondent registered the following domain names: <adbanceautoparts.com>, July 12, 2010. <adcanceautoparts.com>, March 13, 2010, <advancesautoparts.com>, September 2, 2005, <advanvceautoparts.com>, June 13, 2008, <advsnceautoparts.com>, February 6, 2009.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for ADVANCE AUTO PARTS.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the ADVANCE AUTO PARTS mark.
Respondent is a serial cybersquatter.
Respondent uses the at-issue domain name to host hyperlinks to Complainant’s competitors and to send Internet users to Complainant’s own website.
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 at-issue domain names are confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its ADVANCE AUTO PARTS mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i), regardless of whether or not Respondent resides outside the jurisdiction of the domain names’ registrar. 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.”).
Each at-issue domain name, <adbanceautoparts.com>, <adcanceautoparts.com>, <advancesautoparts.com>, <advanvceautoparts.com>, and <advsnceautoparts.com>, either transposes the letters in Complainant’s mark or merely introduces a random indiscriminate character into the mark, and appends the top level domain, “.com” name thereto. These trivial modifications to Complainant’s trademark are insufficient to differentiate any of the domains name from Complainant’s mark. Rather, the alterations are designed to be sufficiently similar to Complainant’s trademark so as to take advantage of certain typographical errors made by persons typing Complainant’s trademark. Respondent’s appending of the top level domain name “.com” to form each of the at-issue domain names is wholly irrelevant to the Panel’s confusing similarity analysis. Therefore, the Panel concludes that the at-issue domain names are each confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name is confusingly similar to a mark when it differs by merely a single character); see also 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)).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “ICS INC.” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the domain names for the purpose of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The <advsnceautoparts.com> domain name addresses a pay-per-click hyperlink directory with links to Complainant’s competitors. Respondent’s use of the domain name in this manner to its benefit, creates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The bulk of the domain names, <adbanceautoparts.com>, <adcanceautoparts.com>, <advancesautoparts.com>, and <advanvceautoparts.com>, is used to direct Internet users to Complainant’s own website. Likewise, such use of these confusingly similar domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (finding that a respondent had no rights under either Policy ¶¶ 4(c)(i), or (iii), even when the domain name resolves to the complainant’s website, because ultimately the respondent could operate this domain name as it saw fit and to its own exclusive benefit)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain names were registered and are being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith with regard to each domain name.
First, each of the at-issue domain names appears to be listed for sale either overtly or upon a review of online advertisements connected with one of more WHOIS records providers. Even a general offer to a sell a domain name creates an inference suggesting bad faith pursuant to Policy ¶4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Second, Respondent has had multiple UDRP decisions decided against it. See for example ER Marks, Inc and QVC, Inc. v. ICS INC., FA 1428474 (Nat. Arb. Forum Mar. 20, 2012); see also Wyse Technology Inc. v. ICS INC., FA 1453395 (Nat. Arb. Forum Aug. 27, 2012). These prior adverse decisions together suggest Respondent’s bad faith in the instant action. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (finding that evidence of prior UDRP proceedings established Policy ¶ 4(b)(ii) bad faith on part of the respondent).
Third, as mentioned above the <advsnceautoparts.com> domain name is being used to host various, mainly unrelated, pay-per-click hyperlink advertisements. Respondent seeks to capitalize on the likelihood of confusion that Internet users will face in associating the content of the <advsnceautoparts.com> domain name’s hyperlinks with Complainant’s own business. Respondent is thus attempting to create a likelihood of confusion between the domain name and Complainant’s mark and to profit therefrom. Using a domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the use of hyperlink advertisements to generate a financial gain through a confusingly similar domain name served as evidence of Policy ¶ 4(b)(iv) bad faith for the respondent).
Fourth, Respondent is typosquatting. Typosquatting is a form of cybersquatting that relies on typographical errors made when an Internet user mistypes or misspells an intended destination into a web browser’s address window or search engine’s input field. The typosquatter anticipates that some mistyped addresses will match a URL that he or she controls. The resulting unintended visits to typosquatter controlled webpage(s) can then be exploited via click through advertisement or otherwise. In the instant case, each at-issue domain name is formed through either the introduction of a random character into the ADVANCE AUTO PARTS mark, or by misspelling/mistyping a single character in the mark. A collective review of Respondent’s assemblage of domain names leaves not doubt that Respondent’s purpose in registering and using such domain names was to typosquat on Complainant’s trademark. Typosquatting, in and of itself, shows bad faith under Policy ¶4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s ADVANCE AUTO PARTS mark at the time it registered the at-issue domain names. Respondent’s prior knowledge of Complainant’s mark can be inferred from the worldwide notoriety of the ADVANCE AUTO PARTS mark, and the fact that Respondent registered multiple mistyped variations of said mark. Registering a domain name (here multiple domain names) with knowledge that it is confusingly similar to the mark of another suggests bad faith under Policy ¶4(a)(iii). See, e.g., Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adbanceautoparts.com>, <adcanceautoparts.com>, <advancesautoparts.com>, <advanvceautoparts.com>, and <advsnceautoparts.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 8, 2013
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