Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1605001676655
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND <ADVANCEDAUTOPARTS.COM> DOMAIN NAME
The domain name at issue is <advancedautoparts.com>, registered with Internet Domain Service BS Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2016; the Forum received payment on May 25, 2016.
On May 27, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <advancedautoparts.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 June 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@advancedautoparts.com. Also on June 2, 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 June 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant owns the ADVANCE AUTO PARTS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,815,267, registered Jan. 4, 1994). Complainant is the second largest retailer of automotive replacement parts and accessories nationwide, and uses the ADVANCE AUTO PARTS mark in connection with its goods and services. The <advancedautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. The <advancedautoparts.com> domain name incorporates the mark entirely while eliminating the spaces in Complainant’s mark and adding the extra letter “D” to “ADVANCE” to create “ADVANCED,” and adding the generic top-level domain (“gTLD”) “.com” to the mark.
2. Respondent has no rights or legitimate interests in the <advancedautoparts.com> domain name. Respondent is not commonly known by the <advancedautoparts.com> domain name, as nothing in the WHOIS record for the <advancedautoparts.com> domain name reflects that Respondent is commonly known by the domain name. Complainant has not licensed, authorized, or permitted Respondent to register the <advancedautoparts.com> domain name. Further, Respondent has failed to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain name to provide links to services and products offered by Complainant to take advantage of Complainant’s well-known mark for commercial gain.
3. Respondent has engaged in bad faith registration and use of the <advancedautoparts.com> domain name. Respondent’s use of the domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Additionally, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent has engaged in typosquatting, and has used a privacy service, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ADVANCE AUTO PARTS mark. Respondent’s domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <advancedautoparts.com> domain name, and that Respondent registered and uses the domain name 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 un<advancedautoparts.com> 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 owns the ADVANCE AUTO PARTS mark through its registration with the USPTO (e.g., Reg. No. 1,815,267, registered Jan. 4, 1994).[1] Complainant uses the ADVANCE AUTO PARTS mark in connection with its goods and services. Registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even where a respondent resides in a different country. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Next, Complainant asserts the <advancedautoparts.com> domain name is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. The domain name incorporates the mark entirely while eliminating the spaces in Complainant’s mark and adding the extra letter “D” to “ADVANCE” to create “ADVANCED,” and adding the gTLD “.com” to the mark. The elimination of spaces is irrelevant to the analysis of confusing similarity, because spaces are impermissible in domain names. The addition of a gTLD is irrelevant because gTLDs are a required feature of domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names). Including a misspelled version of a complainant’s mark, such as adding a single character, does not reduce confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds the <advancedautoparts.com> domain name is confusingly similar pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <advancedautoparts.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent has no rights or legitimate interests in the <advancedautoparts.com> domain name. According to Complainant, Respondent is not commonly known by the <advancedautoparts.com> domain name, as nothing in the WHOIS record for the domain name reflects that Respondent is commonly known by the domain name. The WHOIS information for the <advancedautoparts.com> domain name refers to “Domain Admin / Whois Privacy Corp.” as the registrant of record. Complainant claims that it has never licensed, authorized, or permitted Respondent to register the <advancedautoparts.com> domain name. Lacking a Response from Respondent, the Panel finds that Complainant’s contentions are adequate to establish that Respondent lacks rights to the <advancedautoparts.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant asserts that Respondent has failed to use the <advancedautoparts.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent’s <advancedautoparts.com> domain name provides links to services and products offered by Complainant to take advantage of Complainant’s well-known mark for commercial gain. Respondent has not denied the allegations. See TM Acquisition Corp. v. Warren, FA 204147 (Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s use of the <advancedautoparts.com> domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website and that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark per Policy ¶¶ 4(b)(iii) and (iv). Because there is no response from the Respondent, the Panel Agrees. See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding 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)); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Complainant argues that Respondent has engaged in typosquatting, and has used a privacy service, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Typosquatting has often been found to evince bad faith registration and use. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Although the use of a privacy service without more cannot reach the threshold of bad faith registration and use, See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO Nov. 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services), however, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). The Panel finds such circumstances present here and therefore holds that Respondent has registered and used the <advancedautoparts.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advancedautoparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 1, 2016
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