AutoZone IP LLC v. Lisa Katz / Domain Protection LLC
Claim Number: FA1708001744980
Complainant is AutoZone IP LLC (“Complainant”), represented by Emily Chambers Welch of Alston & Bird LLP, Georgia, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autonzone.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2017; the Forum received payment on August 17, 2017.
On August 18, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <autonzone.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@autonzone.com. Also on August 24, 2017, 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 September 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global retailer of automotive parts and accessories.
Complainant uses the AUTOZONE mark to market its products and services.
Complainant holds a registration for the AUTOZONE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,721,079, registered Aug. 1, 1989).
Respondent registered the domain name <autonzone.com> on or about December 1, 2004.
The domain name is confusingly similar to Complainant’s AUTOZONE mark.
Respondent has not been commonly known by the domain name.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate non-commercial or fair use of, the domain name.
The domain name resolves to several different web pages, including a parked webpage hosting click-through links to the websites of third parties operating in competition with Complainant’s business.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent is a serial cyber-squatter who has been a respondent in previous UDRP decisions in which disputed domain names were transferred to various complainants.
Respondent offered to sell the domain name to Complainant for a sum in excess of Respondent’s legitimate out-of-pocket costs to acquire it.
The domain name attracts internet users to Respondent’s website presumably for Respondent’s commercial gain through the practice of typo-squatting.
Respondent registered the domain name with knowledge of Complainant and its rights to the AUTOZONE mark.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the AUTOZONE service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Australia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <autonzone.com> domain name is confusingly similar to Complainant’s longstanding and prominent AUTOZONE mark. The domain name incorporates the mark in its entirety, adding only the extraneous letter “n” and the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Am. Online, Inc. v. David, FA 104980 (Forum April 10, 2002):
The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.
See also: TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015):
Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.
Further see: Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017):
[I]t is well established … that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a [UDRP complainant’s] trademark.
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <autonzone.com> domain name, that Respondent is not affiliated with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the AUTOZONE mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Lisa Katz” of “Domain Protection LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired right to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). See also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum November 17, 2003): “Given the WHOIS contact information for the disputed domain,” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.”
We next observe that Complainant contends, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the <autonzone.com> domain name, or a legitimate non-commercial or fair use of it, in that the domain name resolves to several different webpages, including a parked webpage hosting click-through links to third parties unrelated to or in competition with Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent seeks to profit from this employment of the domain name. Such a use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015). See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum September 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is plain from the record that the <autonzone.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to take advantage of common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business on-line. Typo-squatting is direct evidence of Respondent’s bad faith in registering and using the challenged domain name.
See, for example, Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015):
Respondent has also engaged in typo[-]squatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
It is likewise evident that Respondent knew of Complainant and its rights in the AUTOZONE mark when it registered the <autonzone.com> domain name. Such knowledge may be inferred from “the name used for the domain and the use made of it.” See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014). This guilty knowledge further demonstrates Respondent’s bad faith in registering the domain name. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012):
Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <autonzone.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 22, 2017
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