Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. DOMAIN NETWORK SOLUTIONS LLC.
Claim Number: FA1407001572870
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is DOMAIN NETWORK SOLUTIONS LLC. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advanceautoarts.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 1, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <advanceautoarts.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2014 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@advanceautoarts.com. Also on August 1, 2014, 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, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
i. Complainant is the second largest retailer of automotive replacement parts and accessories nationwide. Complainant operates from the <advanceautoparts.com> website as part of Complainant’s main commerce and point of sale operations, in addition to their chain of stores.
ii. Complainant owns registrations for the ADVANCE AUTO PARTS mark with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit E.
iii. Respondent’s <advanceautoarts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
1. Respondent removes the letter “p” from the word PARTS in Complainant’s mark.
2. Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
i. Respondent is not commonly known by the disputed domain name. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The WHOIS information for Respondent’s disputed domain name lists “Domain Network Solutions LLC” as registrant with a registration date of March 5, 2009.
ii. Respondent uses the disputed domain name to redirect unsuspecting internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent uses the disputed domain name to resolve to a website displaying pay-per-click links promoting products that compete with Complainant. These links divert potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business.
ii. Respondent’s disputed domain name is used to attract and mislead consumers for Respondent’s own profit by redirecting them to a website displaying pay-per-click links. Respondent’s resolving website also features Complainant’s mark spelled correctly, which further indicates Respondent’s disputed domain names intentional design.
iii. Respondent’s registration of the confusingly similar <advanceautoarts.com> domain name indicates typosquatting behavior because Respondent removes a single letter for the purpose of confusing internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which is the second largest retailer of automotive replacement parts and accessories in that country.
2. Complainant owns registrations for the ADVANCE AUTO PARTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. registered trademark No. 1,815,267, registered on January 4, 1994).
3. Respondent registered the disputed domain name on March 5, 2009 and
uses the disputed domain name to redirect unsuspecting
internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends that it is the second largest retailer of automotive replacement parts and accessories nationwide. Complainant contends that it operates from the www.advanceautoparts.com website as part of Complainant’s main commerce and point of sale operations, in addition to its chain of stores. Complainant argues that it has rights in the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i) through its registrations with the USPTO. Complainant provides evidence that it owns registrations for the ADVANCE AUTO PARTS mark with the USPTO in Complainant’s Exhibit E (e.g., Reg. No. 1,815,267 registered January 4, 1994). Panels have conclusively agreed that a registration with the USPTO for a given mark is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel therefore concludes that Complainant has rights in the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant claims that Respondent’s <advanceautoarts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent removes the letter “p” from the word PARTS in Complainant’s mark. Additionally, Complainant points out that Respondent adds the gTLD “.com” to Complainant’s mark. Panels have frequently found that removing a letter from a complainant’s mark and adding a gTLD does not differentiate the disputed domain name from the registered mark to the extent to avoid a finding of confusingly similar under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel concludes that Respondent’s <advanceautoarts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADVANCE AUTO PARTS trademark and to use it in its domain name, making only a minor spelling alteration;
(b) Respondent uses the disputed domain name to resolve to a website displaying pay-per-click links promoting products that compete with Complainant. These links divert potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent has no rights or legitimate interests in the <advanceautoarts.com> domain name under Policy ¶ 4(c)(ii). Complainant alleges that Respondent is not, and has never been commonly known by the disputed domain name. Complainant further claims that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “Domain Network Solutions LLC” as registrant with a registration date of March 5, 2009. The panel in Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Nat. Arb. Forum Oct. 29, 2013) held that some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record.” Likewise, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Taking these prior panel holdings into consideration, the Panel concludes that Respondent is not commonly known by the <advanceautoarts.com> domain name under Policy ¶ 4(c)(ii);
(e) Next, Complainant asserts that Respondent uses the disputed domain name to redirect unsuspecting internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes Complainant’s Exhibit H to see that Respondent’s resolving website displays links including, “Advance Part,” “Advance Auto Parts.com,” “Advance Auto Parts,” “Advance Auto Parts Online,” and “Auto Parts Stores.” Prior panels have often concluded that it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name, to use it to resolve to a website displaying third party links that compete with a complainant. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The current situation is comparable, and thus the Panel concludes that Respondent’s use of the disputed domain name to resolve to a website displaying links that compete with Complainant does not convey rights or legitimate interests to Respondent under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <advanceautoarts.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant asserts, as discussed above, that Respondent uses the disputed domain name to resolve to a website displaying pay-per-click links promoting products that compete with Complainant. Complainant further explains that these links divert potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business. The panel in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) stated, “Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).” Similarly, here the Panel concludes that Respondent’s use of the disputed domain name to resolve to a website offering links including “Advanced Auto Parts,” disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii) by diverting Internet users away from Complainant.
Secondly, Complainant further argues that Respondent’s disputed domain name is used to attract and mislead consumers for Respondent’s own profit by redirecting them to a website displaying pay-per-click links. Complainant presumes that Respondent collects revenue when Internet users click on the links displayed on Respondent’s resolving website. Complainant states that Respondent’s resolving website also features Complainant’s mark spelled correctly, which further indicates Respondent’s disputed domain name’s intentional design. The panel in Google Inc. v. Aloysius Thevarajah, FA1295342 (Nat. Arb. Forum Dec. 31, 2009) concluded that respondent’s use of a confusingly similar domain name to resolve to a parked webpage that features hyperlinks to third-parties unrelated to a complainant “constitutes bad faith registration and use under Policy ¶ 4(b)(iv).” The Panel here agrees and finds that Respondent’s use of the confusingly similar <advanceautoarts.com> domain name to resolve to a website displaying third-party links from which Respondent presumably collects revenue, amounts to bad faith use and registration under Policy ¶ 4(b)(iv).
Thirdly, Complainant also claims that Respondent’s registration of the confusingly similar <advanceautoarts.com> domain name indicates typosquatting behavior because Respondent removes a single letter for the purpose of confusing internet users as to Complainant’s affiliation with the disputed domain name. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. 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).”). The Panel concludes that Respondent’s removal of the letter “p” in the word PARTS in Complainant’s mark suggests typosquatting behavior in bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ADVANCE AUTO PARTS mark and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanceautoarts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 28, 2014
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