AutoZone Parts, Inc. v. S.H. INC
Claim Number: FA0907001274396
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty
Bina, of Alston & Bird LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <www-autozone.com>, registered with eNom.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2009.
On July 17, 2009, eNom confirmed by e-mail to the National Arbitration Forum that the <www-autozone.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 12, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@www-autozone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <www-autozone.com> domain name is confusingly similar to Complainant’s AUTOZONE mark.
2. Respondent does not have any rights or legitimate interests in the <www-autozone.com> domain name.
3. Respondent registered and used the <www-autozone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc., markets automotive parts and accessories. Complainant markets these products under its AUTOZONE mark. Complainant has registered its AUTOZONE mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,496,638 issued July 19, 1988).
Respondent registered the <www-autozone.com>
domain name on May 16, 2008. The
disputed domain name resolves to a website that contains links entitled
“Autozone” and “Auto Zone,” which redirect Internet users to third-party
websites that offer automotive products and services in competition with
Complainant. The website resolving from
the disputed domain name also contains links entitled “
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."
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.”).
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.
Complainant has provided evidence of the registration of its
AUTOZONE mark with the USPTO (Reg. No. 1,496,638 issued July 19, 1988). The Panel finds this registration
sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also
Complainant asserts Respondent’s <www-autozone.com> domain name contains Complainant’s AUTOZONE mark with the addition of a hyphen, the “www” prefix, and the generic top-level domain “.com.” The Panel finds that these additions do not diminish the similarity between the disputed domain name and Complainant’s AUTOZONE mark. Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s AUTOZONE mark under Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain name. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name.”).
Complainant contends Respondent’s disputed domain name resolves to a website that displays links entitled “Auto Zone” and “AutoZone,” which direct Internet users’ to third-party websites that compete with Complainant’s automobile products business. Furthermore, the disputed domain name also contains links that lead Internet users to third-party websites that are unrelated to Complainant’s business. The Panel finds Respondent’s use of the disputed domain name to provide competing and unrelated links to third-party businesses is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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)).
Additionally, Complainant asserts Respondent is not commonly known by the disputed domain name. As proof, Complainant offers the WHOIS information, which lists the registrant as “S.H. Inc.,” a name that bears no resemblance to the <www-autozone.com> domain name. Thus, the Panel find Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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).
Also, Complainant contends Respondent has engaged in typosquatting. Typosquatting occurs when a registrant relies on the typographical omission or substitution of an element of a domain name to mislead Internet users who mistakenly mistype an intended domain name. In this case, Respondent has attempted to capitalize on Internet users mistakenly substituting a hyphen for a period between the “www” and “autozone” elements of Complainant’s domain name. The Panel finds this clearly constitutes typosquatting, which is further evidence Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“Respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because Respondent's addition of the prefix "www-" to Complainant's AMAZON.COM mark constitutes typosquatting.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence Respondent is using the disputed domain name, in part to redirect Internet users to competing websites offering automobile products. The Panel finds Respondent’s competing use of the disputed domain name constitutes disruption, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts Respondent is presumably receiving
compensation in the form of click-through fees for its use of the competing and
unrelated links on the website resolving from the confusingly similar disputed
domain name. The Panel agrees and finds
Respondent is attempting to profit by creating a likelihood of confusion as to
Complainant’s affiliation with the disputed domain name and resolving website,
which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
As discussed previously, the Panel finds Respondent has engaged in typosquatting through its use of the disputed domain name. The Panel finds that the practice of typosquatting is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 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)); see also The 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).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-autozone.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 3, 2009
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