Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Hulmiho Ukolen / Poste restante
Claim Number: FA1407001572883
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advanaceautoparts.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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 31, 2014; the National Arbitration Forum received payment on July 31, 2014. The Complaint was submitted in both English and Finnish.
On August 4, 2014, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <advanaceautoparts.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 11, 2014, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of September 2, 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@advanaceautoparts.com. Also on August 11, 2014, the Finnish language 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 9, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the ADVANCE AUTO PARTS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267, registered January 4, 1994). Complainant uses the mark for retail auto part stores and associated services. The <advanaceautoparts.com> domain name is confusingly similar to the ADVANCE AUTO PARTS mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name as demonstrated by the WHOIS record. Further, Complainant has not licensed or otherwise authorized Respondent’s use of the mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The <advanaceautoparts.com> domain name resolves to feature pay-per-click links, some of which compete with Complainant in the area of auto parts and services.
Respondent registered and is using the disputed domain name in bad faith.
Respondent has listed the confusingly similar domain name for sale. Respondent also has a history of cybersquatting as demonstrated by prior UDRP decisions. Further, Respondent uses the disputed domain name to promote links in competition with Complainant, which disrupts Complainant’s operations. Additionally, Respondent has intentionally attempted to misled Internet users as to Complainant’s affiliation with the <advanaceautoparts.com> domain name and resolving links, and profit from such confusion. Finally, Respondent has engaged in typosquatting.
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 uses the at-issue domain name to address a website featuring third-party hyperlinks, some of which compete with Complainant’s business and from which Respondent intends to generate a commercial gain.
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 name is 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).See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <advanaceautoparts.com> domain name differs from Complainant’s trademark by the elimination of the mark’s spaces, the addition of the letter “a” to its first term, and the appending of the top level domain name, “.com,” thereto. These trivial modifications to Complainant’s trademark are insufficient to differentiate the domains name from Complainant’s mark for the purposes of the Policy. Rather, the slight alterations are designed to make the domain name sufficiently similar to Complainant’s trademark so that Internet users who intend to type Complainant’s trademark might instead type the at-issue domain name. Further, it is well settled that the addition of the top level domain name “.com” is wholly irrelevant to the Panel’s analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS trademark. 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)).
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.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. 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 the at-issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Hulmiho Ukolen / Poste restante” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the <advanaceautoparts.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain names pursuant for the purposes 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 at-issue domain name).
Respondent uses the at-issue domain name to address a website featuring third-party hyperlinks, some of which compete with Complainant’s business. Respondent intends to benefit from the <advanaceautoparts.com> website via pay-per-click links or otherwise. Using the domain name in this manner is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (holding that given the respondent’s failure to offer any goods or services on its website other than links to a variety of third-party websites, the respondent had not used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <advanaceautoparts.com> domain name was registered and is 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 the domain name.
First, Respondent listed the confusingly similar domain name for sale for $4,750. Respondent’s offer to sell suggests bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007)(finding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Second, Respondent has a history of cybersquatting. Respondent has suffered multiple adverse UDRP decisions prior to the instant dispute including, but not limited to, RE/MAX, LLC v. Privacy—Protect.org / Issac Goldstein / Hulmiho Okolen Shlomo Icik, D2013-2036 (WIPO March 1, 2014); Fragrancenet.com, Inc. v. Hulmiho Ukolen, FA 1497908 (Nat. Arb. Forum June 24, 2013); and The Gap v. Hulmiho Ukolen, FA 1507424 (Nat. Arb. Forum August 23, 2013). Under Policy ¶ 4(b)(ii) these prior adverse decisions collectively suggest Respondent’s bad faith with regard to the instant dispute. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Third and as mentioned above, Respondent uses the at-issue domain name to promote links such as “Discount Auto Parts,” “Custom Auto Paint,” and “Performance Auto Parts.” These links appear to concern products which likely compete with Complainant’s products. Using the domain name in this manner disrupts Complainant’s business and demonstrates Policy ¶ 4(b)(iii) grounded bad faith registration and use of the at-issue domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Fourth, Respondent has intentionally attempted to mislead Internet users as to Complainant’s affiliation with the <advanaceautoparts.com> website and its resident links. Through the website, Respondent intends to benefit from the confusingly similar domain name by trading off the goodwill associated with Complainant’s trademark. The foregoing demonstrates bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (finding “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees’”).
Finally, Respondent’s <advanaceautoparts.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces a typographical error or misspelling ‑here the insertion of a single letter “a”‑ into a trademark and then uses the resulting string in a domain name. The typosquatter wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for products or services associated with the target trademark and in so doing be directed to a web presence controlled by the typosquatter. When a waylaid Internet user lands on the typosquatter’s website, the typosquatter can then attempt to exploit his or her accidental visit. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <advanaceautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 11, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page