Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. ICS ICS / Ics inc
Claim Number: FA1506001625678
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS ICS / Ics inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advancdeautoparts.com> and <audvanceautoparts.com>, registered with Godaddy.Com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2015; the Forum received payment on June 23, 2015.
On June 24, 2015, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <advancdeautoparts.com> and <audvanceautoparts.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, 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 July 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2015 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@advancdeautoparts.com, postmaster@audvanceautoparts.com. Also on July 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 contends:
1. Complainant uses the ADVANCE AUTO PARTS mark in connection with its business as a leading auto parts retailer that operates throughout the United States. Complainant has rights in the ADVANCE AUTO PARTS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,484,796, registered April 12, 1988). Respondent’s disputed <advancdeautoparts.com> and <audvanceautoparts.com> domain names are minor misspellings of Complainant’s ADVANCE AUTO PARTS mark and are therefore confusingly similar. The domain <advancdeautoparts.com> simply adds the letters “d” to Complainant’s mark and <audvanceautoparts.com> merely adds a “u” to Complainant’s mark. Both of the disputed domain names differ from Complainant’s ADVANCE AUTO PARTS mark by the addition of the generic top-level domain (“gTLD”) “.com,” which is irrelevant to Policy ¶ 4(a)(i).
2. Respondent lacks rights and legitimate interests in the disputed domain names. Firstly, Respondent has not been commonly known by the disputed domain name, nor has Respondent been authorized to use Complainant’s ADVANCE AUTO PARTS mark in any manner. Second, Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the <audvanceautoparts.com> domain name to display various click through links, some of which compete with Complainant and <advancdeautoparts.com> redirects to Complainant’s website in violation of the affiliate agreement between the parties.
3. Respondent has registered and is using the disputed domain names in bad faith. Respondent has also listed the disputed domain names for sale in bad faith. Respondent has demonstrated a pattern of cybersquatting that is indicative of Respondent’s bad faith in this proceeding. Respondent’s bad faith is further demonstrated through Respondent’s generation of revenue through click through links on the <audvanceautoparts.com> domain name. Finally, Respondent’s registration of <advancdeautoparts.com> and <audvanceautoparts.com> displays typosquatting behavior, which is further evidence of bad faith.
B. Respondent:
1. Respondent has failed to submit a response in this proceeding.
1. Respondent’s <advancdeautoparts.com> and <audvanceautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <advancdeautoparts.com> and <audvanceautoparts.com> domain names.
3. Respondent registered or used the <advancdeautoparts.com> and <audvanceautoparts.com> domain names in bad faith.
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.”).
Complainant contends that it has rights in the ADVANCE AUTO PARTS mark through registration of the mark with the USPTO. Panels have consistently determined that a complainant has rights in a mark based on registration of the mark with the USPTO (Reg. No. 1,484,796, registered April 12, 1988). 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). The Panel finds that Respondent has rights in the ADVANCE AUTO PARTS mark based on registration with the USPTO according to Policy ¶ 4(a)(i).
Complainant then argues that Respondent’s disputed <advancdeautoparts.com> and <audvanceautoparts.com> domain names are confusingly similar to the ADVANCE AUTO PARTS mark. Both domains add the gTLD “.com” to the end of the mark. Generally, panels have found that the addition of a gTLD is not relevant to an analysis of confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Both of Respondent’s disputed domain names add a singular letter to the ADVANCE AUTO PARTS mark, “u” in the case of <audvanceautoparts.com> and “d” in <advancdeautoparts.com>. Panels have held that a domain name can still be confusingly similar to a complainant’s mark if a single letter is added. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel accordingly finds that Respondent’s disputed <advancdeautoparts.com> and <audvanceautoparts.com> domain names are confusingly similar to the ADVANCE AUTO PARTS mark according to a Policy ¶ 4(a)(i) analysis.
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.”).
Complainant first argues that Respondent has not been commonly known by the disputed domain name, nor has Respondent been authorized to use the ADVANCE AUTO PARTS mark in any manner. According to relevant WHOIS information, Respondent is listed as “ICS ICS” of the organization “Ics inc.” See Complainant’s Attached Ex. I. Neither the listed name or the organization appears to resemble the disputed domain names. Panels have held that a Respondent is not commonly known by a disputed domain name based on WHOIS and other relevant information. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel finds that under Policy ¶ 4(c)(ii) the Respondent is not commonly known by the disputed domain names.
Second, Complainant contends that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the <audvanceautoparts.com> domain name to display various click through links, some of which compete with Complainant. See Complainant’s Attached Ex. H. Panels have routinely held that the display of competing links on a confusingly similar domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Respondent’s other domain <advancdeautoparts.com> appears to redirect to Complainant’s website in an effort to accrue affiliate fees. See Complainant’s Attached Ex. H. Panels have held that use of a confusingly similar domain name to generate revenue through affiliate fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel accordingly finds that Respondent’s uses of the disputed <advancdeautoparts.com> and <audvanceautoparts.com> domain names do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent has placed both of the disputed domain names up for sale to the general public. The Panel sees that Complainant has provided evidence of this offer for sale at Attached Ex. I. The Panel agrees that these offers for sale serve as evidence of bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant contends that Respondent has displayed a pattern of bad faith registration and that this pattern may be used to infer that the current domain names were registered in bad faith under Policy ¶ 4(b)(ii). The Panel notes Complainant’s Attached Ex. N to see three previous adverse UDRP decisions that have been rendered against Complainant. Panels have held that UDRP decisions against a respondent cancan create an inference of bad faith registration and use under Policy ¶ 4(b)(ii). 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).”). The Panel accordingly finds that Respondent has demonstrated a pattern of bad faith use and registration pursuant to Policy ¶ 4(b)(ii).
Next, Complainant states that Respondent’s use of the disputed domain names to redirect unsuspecting Internet users to a website that offers links to Complainant’s competitors is disruptive to Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Complainant’s Attached Ex. H. The Panel notes that some of the links displayed on the <audvanceautoparts.com> domain include “AUTO PARTS WAREHOUSE” and “50% OFF ADVANCE AUTOPARTS.” See Id. Previous panels have decided that such behavior is disruptive and constitutes bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent’s behavior is disruptive of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
In addition, it is Complainant’s position that Respondent uses the disputed domain names to intentionally attract Internet users to its own websites for commercial gain. The Panel recalls that Respondent has placed a variety of different links to third-party businesses, some of which compete with Complainant, on its website. Additionally, Complainant notes that Respondent uses the other disputed domain name to redirect Internet users to Complainant’s own website, in which Complainant believes Respondent presumably profits from the redirection. Previous panels have found that either behavior indicates bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program). Consequently, the Panel finds that Respondent’s behavior indicates bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent has engaged in typosquatting, which is further evidence of bad faith under Policy ¶ 4(a)(iii). The Panel recalls that Respondent’s disputed domain names differ from the ADVANCE AUTO PARTS mark by only the addition of a single letter. The Panel finds that these misspellings constitute typosquatting, and holds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to 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 <advancdeautoparts.com> and <audvanceautoparts.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 4, 2015
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