Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Above.com Legal
Claim Number: FA1407001572798
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceatoparts.com>, <advanceauroparts.com>, and <wwwadvanceautoparts.com>, registered with Above.com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 6, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <advanceatoparts.com>, <advanceauroparts.com>, and <wwwadvanceautoparts.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2014 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@advanceatoparts.com, postmaster@advanceauroparts.com, postmaster@wwwadvanceautoparts.com. Also on August 12, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns the ADVANCE AUTO PARTS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267, registered January 4, 1994). Complainant uses the mark for retail auto part stores and associated services. The <advanceatoparts.com>, <advanceauroparts.com>, and <wwwadvanceautoparts.com> domain names are confusingly similar to the ADVANCE AUTO PARTS mark.
3. Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names.
4. Further, Respondent is not affiliated with Complainant. Respondent is using the <advanceatoparts.com> and <wwwadvanceautoparts.com> domain name to promote links to third-party websites, some of which compete with Complainant’s auto parts retail business.
5. Respondent is using the <advanceauroparts.com> to direct Internet users to Complainant’s own website through Complainant’s affiliate program, which violates the affiliate agreement.
6. Respondent’s bad faith as demonstrated by seven grounds.
7. First, Respondent has listed the <advanceatoparts.com> disputed domain name for sale. Second, Respondent has a history of cybersquatting as demonstrated by prior UDRP decisions.
8. Third, Respondent is using two of the disputed domain names to promote links to products that compete with Complainant; such use disrupts Complainant’s own business.
9. Fourth, Respondent is attempting to mislead users as to Complainant’s affiliation with the disputed domain names in an effort to profit via click-through fees.
10. Fifth, Respondent uses the <advanceauroparts.com> domain name to direct Internet users to Complainant’s own website through Complainant’s affiliate program, which violates the affiliate agreement.
11. Sixth, Respondent was aware of Complainant’s rights in the mark at the time the domain names were registered.
12. Lastly, Respondent’s behavior amounts to typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in retail auto part stores and associated services.
2. Complainant owns the ADVANCE AUTO PARTS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267, registered January 4, 1994).
3. Respondent registered the disputed domain names as follows:
<advanceatoparts.com> on July 6, 2013; <advanceauroparts.com> on January 14, 2013; and <wwwadvanceautoparts.com> on March 1, 2012.
4. Respondent is using the domain names variously to compete with Complainant’s business, breach Complainant’s affiliate program and improperly earn click-through fees.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses the ADVANCE AUTO PARTS mark for retail auto part stores and associated services. Complainant claims to own the mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,815,267, registered January 4, 1994). Previous panels have held that a complainant’s USPTO registration satisfies the initial requirement of Policy ¶ 4(a)(i) regardless of whether the respondent resides in the United States. See (Nat. Arb. Forum Aug. 24, 2010) (stating that “the 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.”). Accordingly, the Panel agrees that Complainant’s holding of the ADVANCE AUTO PARTS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant argues that the <advanceatoparts.com>, <advanceauroparts.com>, and <wwwadvanceautoparts.com> domain names are confusingly similar to the ADVANCE AUTO PARTS mark. Complainant notes that the <advanceatoparts.com> and <advanceauroparts.com> names deviate from the mark by the elimination of spacing, a single substituted letter, and the addition of the generic top-level domain (“gTLD”) “.com.” In The Gap, Inc. v. Shu Lin Co c/o shu lin, FA 1332804 (Nat. Arb. Forum July 27, 2010), the Panel found the <oldhavy.com> domain name confusingly similar to Complainant’s OLD NAVY mark despite the substitution of a single letter, the elimination or spacing, and the addition of a gTLD. The Panel here agrees that such alternations are insufficient to negate confusing similarity and find the <advanceatoparts.com> and <advanceauroparts.com> domain names confusingly similar to the ADVANCE AUTO PARTS mark pursuant to Policy ¶ 4(a)(i).
Complainant further claims the <wwwadvanceautoparts.com> domain name merely adds the prefix “www” and a gTLD to the otherwise incorporated mark less the spacing. In Brooks Brothers Group, Inc. v. Isaac Goldstein, FA 1488928 (Nat. Arb. Forum April 12, 2013), the panel found, “Respondent’s <wwwbrooksbrothers.com> domain name is confusingly similar to Complainant’s BROOKS BROTHERS mark, since it incorporates Complainant’s entire mark and merely adds the generic “www” to the beginning of the mark, duplicating a common typing mistake made by Internet users. The disputed domain name also adds the gTLD “.com,” and eliminates the space in the mark.” Accordingly, the Panel finds that the <wwwadvanceautoparts.com> domain name is confusingly similar to the ADVANCE AUTO PARTS mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADVANCE AUTO PARTS mark and to use it in its domain names, making only the minor alterations referred to above;
(b) Respondent is using the disputed domain names variously to compete with Complainant’s business, breach Complainant’s affiliate program and improperly earn click-through fees;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. Specifically, Complainant urges that Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS record. The Panel observes that “Above.com Legal” is listed as the registrant for all three domain names. Accordingly, the Panel agrees that the available evidence does not support a finding that Respondent is commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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);
(e)Complainant claims that Respondent is using the <advanceatoparts.com> and <wwwadvanceautoparts.com> domain name to promote links to third-party websites, some of which compete with Complainant’s auto parts retail business. See Compl., at Attached Ex. H. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel wrote, “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).” The instant Panel agrees that the circumstances at present are comparable, and therefore find that Respondent’s efforts do not comport with Policy ¶¶ 4(c)(i) or (iii);
(f)Complainant also claims that Respondent is using the <advanceauroparts.com> to direct Internet users to Complainant’s own website through Complainant’s affiliate program, which violates the affiliate agreement. The Panel observes that Complainant has included a copy of the affiliate agreement governing their relationship as well as a screenshot of the resolving page. See Compl., at Attached Exs. M and H. In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) the panel found 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). Here, the Panel agrees that Respondent’s use of the domain name amounts to 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).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
names were registered and used in bad faith. That is so for the following
reasons.
First, Complainant points out that Respondent has listed the <advanceatoparts.com> disputed domain name for sale. See Compl., at Attached Ex. I. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel held, “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).” Here, the Panel agrees that the offer to sell the disputed domain name evinces bad faith pursuant to Policy ¶ 4(b)(i).
Second, Complainant argues that Respondent has a history of cybersquatting as demonstrated by prior UDRP decisions. The Panel notes that Complainant has included in Ex. N prior UDRP decisions adverse to Respondent: W.W. Grainger. Inc. v. Above.com Legal, FA 1390105 (Nat. Arb. Forum July 6, 2011); Baylor Univ. v. Above.com Legal, FA 1438502 (Nat. Arb. Forum May 11, 2012); 3M Co. v. Above.com Legal, FA 1469850 (Nat. Arb. Forum December 22, 2012). The Panel agrees that such prior findings of bad faith serve to inform the Panel’s Policy ¶ 4(b)(ii) bad faith determination in the present case. 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).”).
Third, Complainant contends that Respondent is using the <advanceatoparts.com> and <wwwadvanceautoparts.com> domain names to promote links to products that compete with Complainant. See Compl., at Attached Ex. H. The Panel observes that the disputed domain names resolve to feature links such as “Pep Boys Official Site,” “Auto Parts – carparts.com,” and “Auto Parts.” Complainant submits that such use disrupts Complainant’s own business and therefore evinces bad faith. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel found that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii). Accordingly, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii) as the <advanceatoparts.com> and <wwwadvanceautoparts.com> domain names promote links competing with Complainant.
Fourth, Complainant argues that Respondent is attempting to mislead users as to Complainant’s affiliation with the disputed domain names in an effort to profit via click-through fees. See Compl., at Attached Ex. H. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held, “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” The circumstances at present are comparable. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Fifth, Complainant argues that Respondent uses the <advanceauroparts.com> domain name to direct Internet users to Complainant’s own website through Complainant’s affiliate program, which violates the affiliate agreement. Complainant directs the Panel to Exhibit M for a copy of the relevant affiliate agreement, as well as Exhibit H for a screenshot of the resolving page and affiliated data output. Prior panels have found bad faith under similar circumstances. See 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). The Panel agrees that violation of the affiliate agreement implicates Policy ¶ 4(a)(iii).
Sixth, Complainant argues that Respondent was aware of Complainant’s rights in the mark at the time the domain names were registered. In so arguing, Complainant notes that Respondent was a member of Complainant’s affiliate program, and that such membership demonstrates awareness of Complainant’s rights in the mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the mark at the time the domain names were registered. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. 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).
Seventh, Complainant argues that Respondent’s behavior amounts to typosquatting, which is further evidence of bad faith. Complainant maintains that the three domain names rely on common typing errors. In Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), the panel held that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).” Similarly, in Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003), the panel found the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith. The Panel agrees that Respondent has engaged in typosquatting and therefore finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Lastly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the ADVANCE AUTO PARTS mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanceatoparts.com>, <advanceauroparts.com>, and <wwwadvanceautoparts.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 9, 2014
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