AutoZone IP LLC v. Edvin Calderon / Auto Latino Magazine
Claim Number: FA1612001709660
Complainant is AutoZone IP LLC (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird LLP, Georgia, USA. Respondent is Edvin Calderon / Auto Latino Magazine (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <autozoneads.com> and <autoadszone.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 December 27, 2016; the Forum received payment on December 27, 2016.
On December 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <autozoneads.com> and <autoadszone.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 December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@autozoneads.com, postmaster@autoadszone.com. Also on December 28, 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 January 26, 2017, 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.
1. Complainant is a retailer of automotive-related goods throughout North and South America. Complainant uses the AUTOZONE mark in conjunction with its business practices. Complainant registered the AUTOZONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,501,718, registered Aug. 23, 1988). See Compl., at Attached Ex. D. Respondent’s <autozoneads.com> and <autoadszone.com> are confusingly similar to Complainant’s mark because Respondent uses the mark in its entirety, adding the generic term “ads” and the “.com” general top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in <autozoneads.com> and <autoadszone.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the AUTOZONE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <autozoneads.com> and <autoadszone.com> resolve to search engines for Internet users to locate vehicles for sale, thus promoting goods and services not related to Complainant. See Compl., at Attached Ex. F.
3. Respondent registered and is using <autozoneads.com> and <autoadszone.com> in bad faith. Respondent attempted to sell the disputed domain names to Complainant for $10,000 each, following Complainant’s offer of $100 for each domain. See Compl., at Attached Ex. I. Additionally, the disputed domain names are an attempt to attract Internet users to the <autozoneads.com> and <autoadszone.com> sites, presumably for Respondent’s commercial gain, thereby evincing bad faith. Respondent possessed at least constructive notice of Complainant and its rights to the AUTOZONE mark when registering <autozoneads.com> and <autoadszone.com>.
1. Respondent did not provide a response.
1. Respondent’s <autozoneads.com> and <autoadszone.com> domain names are confusingly similar to Complainant’s AUTOZONE mark.
2. Respondent does not have any rights or legitimate interests in the <autozoneads.com> and <autoadszone.com> domain names.
3. Respondent registered and used the <autozoneads.com> and <autoadszone.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(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 (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 is a retailer of automotive-related goods throughout North and South America. Complainant uses the AUTOZONE mark in conjunction with its business practices. Complainant claims it registered the AUTOZONE mark with the USPTO (e.g., Reg. No. 1,501,718, registered Aug. 23, 1988). See Compl., at Attached Ex. D. The general consensus among Panels is USPTO registrations are sufficient to establish rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant’s USPTO registrations sufficient to show rights in the AUTOZONE mark.
Complainant also maintains Respondent’s <autozoneads.com> and <autoadszone.com> are confusingly similar to Complainant’s mark because Respondent uses the mark in its entirety, adding the generic term “ads” and the “.com” gTLD. Panels have held that the addition of generic terms or gTLDs are not sufficient to distinguish disputed domain names from registered marks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Here, the Panel finds that Respondent’s <autozoneads.com> and <autoadszone.com> domain names are confusingly similar to Complainant’s AUTOZONE mark.
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 (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 (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 asserts Respondent has no rights or legitimate interests in <autozoneads.com> and <autoadszone.com>. To support this argument, Complainant illustrates Respondent is not known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Edvin Calderon” of “Auto Latino Magazine.” See Compl., at Attached Ex. B. “Nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name” pursuant to Policy ¶ 4(c)(ii). Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). Furthermore, Panels have typically held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See Instron Corp. v. Kaner, FA 768859 (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); Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). Based on the available record, the Panel finds that Respondent is not commonly known by the disputed domain names.
Complainant further argues it has not authorized or licensed Respondent to use the AUTOZONE mark in any regard, nor is Respondent affiliated with Complainant. Complainant asserts Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. In support of this argument, Complainant illustrates Respondent’s <autozoneads.com> and <autoadszone.com> resolve to search engines for Internet users to locate vehicles for sale, thereby promoting goods and services not related to Complainant. See Compl., at Attached Ex. F. Disputed domain names resolving to webpages offering unrelated goods and services frequently evince a lack of bona fide offering of goods or services, or a legitimate or fair use of the domain name. “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003). See also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). Hence, the Panel finds that Respondent does not have rights or legitimate interests in <autozoneads.com> and <autoadszone.com>.
Complainant avers Respondent registered and is using <autozoneads.com> and <autoadszone.com> in bad faith. Complainant asserts Respondent attempted to sell the disputed domain names to Complainant for $10,000 each, following Complainant’s offer of $100 for each domain name. See Compl., at Attached Ex. I. Where a respondent counters an offer to purchase disputed domain names with an inflated offer, Panels have found evidence of bad faith registration under Policy ¶ 4(b)(i). See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000); Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant); Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration). Considering Respondent’s exaggerated counteroffer, the Panel finds bad faith registration pursuant to Policy ¶ 4(b)(i).
Additionally, Complainant argues the disputed domain names are an attempt to attract Internet users to the <autozoneads.com> and <autoadszone.com> sites, presumably for Respondent’s commercial gain, thereby evincing bad faith. To remind the Panel, Respondent’s domain names resolve to webpages containing search engines to locate vehicles for sale, unrelated to Complainant’s business. “Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.” (Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014)). In general, Panels have found that domain names resolving to websites containing ads and content unrelated to a complainant’s business evinces bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). In the instant case, the Panel finds Respondent registered and is using <autozoneads.com> and <autoadszone.com> in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends Respondent possessed at least constructive notice of Complainant and its rights to the AUTOZONE mark when registering <autozoneads.com> and <autoadszone.com>. While Panels have concluded that constructive notice is insufficient to establish bad faith, actual notice of a complainant’s mark is sufficient under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Complainant argues because the AUTOZONE mark is renowned and existed well before Respondent’s registration of <autozoneads.com> and <autoadszone.com>, Respondent knew or should have known about Complainant and its rights to the mark. Therefore, the Panel finds that Respondent possessed actual knowledge of Complainant and its rights to the AUTOZONE mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autozoneads.com> and <autoadszone.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 7, 2017
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