AutoZone IP LLC v. Cornell Kay / www.cyberFactor.com
Claim Number: FA1604001668828
Complainant is AutoZone IP LLC (“Complainant”), represented by Sarah P. LaFantano of Alston & Bird LLP, Georgia, USA. Respondent is Cornell Kay / www.cyberFactor.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <integrityautozone.com>, registered with Advanced Internet Technologies, Inc. (AIT).
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2016; the Forum received payment on April 4, 2016.
On April 4, 2016, Advanced Internet Technologies, Inc. (AIT) confirmed by e-mail to the Forum that the <integrityautozone.com> domain name is registered with Advanced Internet Technologies, Inc. (AIT) and that Respondent is the current registrant of the name. Advanced Internet Technologies, Inc. (AIT) has verified that Respondent is bound by the Advanced Internet Technologies, Inc. (AIT) 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 April 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2016 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@integrityautozone.com. Also on April 5, 2016, 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 April 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Complainant is a leading retailer of automotive parts and accessories. Complainant has rights in the AUTOZONE marks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,501,718, registered August 23, 1988). Respondent’s <integrityautozone.com> domain is confusingly similar to the AUTOZONE mark as the domain incorporates the mark in its entirety and only adds the term “integrity.”
Respondent has no rights or legitimate interests in the domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information. Further, Respondent’s prolonged inactive use of the domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain in bad faith. Respondent registered the disputed domain for the purpose of selling the domain to Complainant for more than its legitimate out-of-pocket costs. Respondent has engaged in a pattern of registering domain names that prey on the trademark rights of others. Respondent had knowledge of Complainant’s rights in the AUTOZONE mark at the time of registration.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <integrityautozone.com> domain name.
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(f), 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 AUTOZONE marks based on registration of the marks with the USPTO (e.g., Reg. No. 1,501,718, registered August 23, 1988). The Panel finds that Complainant’s registration with the USPTO is sufficient to demonstrate Complainant’s rights in the AUTOZONE mark. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s domain name is confusingly similar to the AUTOZONE mark. Respondent’s domain name <integrityautozone.com> differs from the AUTOZONE mark through the addition of the generic top-level domain (“gTLD”) “.com” and the generic term “integrity.” Panels have found that the addition of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Panels have also held that adding generic terms to a mark in a domain does not sufficiently distinguish the domain from the mark to which the term is attached. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel therefore finds that Respondent’s <integrityautozone.com> domain is confusingly similar to the AUTOZONE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 argues that there is no evidence that Respondent is commonly known by the domain name based on WHOIS information. The WHOIS information identifies the registrant of the disputed domain as “Cornell Kay” of the organization “www.cyberFactor.com.” Panels have held that a respondent is not commonly known by a domain based on WHOIS information and a lack of evidence to the contrary. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel therefore finds that Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s inactive use of the <integrityautozone.com> domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website displaying the message, “403 Forbidden / Forbidden / You don’t have permission to access / on this server.” Panels consistently find that failing to make any active use of a confusingly similar domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel therefore finds that Respondent’s inactive use is not a permissible use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent registered the disputed domain with the express purpose of selling the domain to Complainant for more than its legitimate out-of-pocket costs, in violation of Policy ¶ 4(b)(i). Complainant bases its contention on Respondent’s nonuse of the disputed domain for two years, and provides a letter from Complainant to Respondent, wherein Complainant states: “You also noted that you would be willing to discuss the Domain Name further with AutoZone. To the extent this was meant as an indication of a desire to sell the Domain Name to AutoZone, you should be aware that AutoZone, as a matter of policy, does not pay for the transfer of domain names that infringe its trademark rights.” Complainant has not included any correspondence from Respondent to Complainant in its exhibits. Panels have concluded that a respondent’s attempt to sell a domain for an amount in excess of its out-of-pocket costs constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding 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). Respondent has not filed a response to refute any of Complainant’s allegations, and the Panel therefore finds that Respondent offered to sell the domain name in excess of its out-of-pocket costs and that this is evidence of bad faith registration and use per Policy ¶ 4(b)(i).
Complainant alleges that Respondent has engaged in behavior proscribed by Policy ¶ 4(b)(ii) through its pattern of registering domains that infringe on the trademark rights of others. Complainant asserts that Respondent has registered domains that incorporate the SUPER BOWL, FORD, PROGRESSIVE, CORVETTE, CROSSFIT, and VERSA marks. Respondent has not denied this allegation. Panels have held that a respondent demonstrates bad faith registration and use where it registers multiple domains containing the marks of other parties. See Am. Woodmark Corp. v. Akham Fuad Hasyim, WIPO Case No. D2012-0099 (WIPO Feb. 22, 2012) (holding that respondent’s registration of “at least eleven other domain names containing the trademarks of third parties” constituted evidence of a pattern of cybersquatting activity). Therefore, the Panel finds that Respondent’s pattern of registering infringing domains is evidence of bad faith under Policy ¶ 4(b)(ii).
Complainant contends that in light of the fame and notoriety of Complainant's AUTOZONE mark, it is inconceivable that Respondent could have registered the <integrityautozone.com> domain name without knowledge of Complainant's rights in the mark. The Panel agrees, and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds such knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <integrityautozone.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 27, 2016
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