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#AutoZone .org : #Domain lost in #UDRP earned revenue for 4 years for #NetSol

ZFBot

UDRP result: Transfer domain.

AutoZone.org, a domain that expired in 2015, was kept in limbo for the past four years, on Network Solutions servers.

The infringing domain displayed ads, generating revenue for NetSol that controlled the DNS. The nameservers were NS1.PENDINGRENEWALDELETION.COM and NS2.PENDINGRENEWALDELETION.COM.

On or around February 5th, 2015, the domain’s WHOIS changed to the expired status that Network Solutions assumes for domains that were not renewed. Amazingly, the domain wasn’t dropped for four years, and AutoZone Parts, Inc. filed a UDRP at the National Arbitration Forum.

The Respondent in this case, LLC Perfect Privacy / Network Solutions LLC, did not respond.

The case was easily decided on behalf of the Complainant, who pointed out the ads appearing on the domain, which was registered in 2003.

Full details on the decision for AutoZone.org follow.

AutoZone Parts, Inc. v. LLC Perfect Privacy / Network Solutions LLC

Claim Number: FA1903001834724

PARTIES

Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kathryn K. Van Namen of Butler Snow, LLP, Tennessee, USA. Respondent is LLC Perfect Privacy / Network Solutions LLC (“Respondent”), Florida, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <autozone.org>, registered with GoDaddy.com, LLC.

PANEL

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.

Steven M. Levy, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 19, 2019; the Forum received payment on March 20, 2019.

On Mar 20, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <autozone.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2019 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@autozone.org. Also on March 22, 2019, 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 April 15, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the largest retailer of automotive parts and accessories in the United States. Complainant has rights in the AUTOZONE mark through its trademark registrations dating back to 1989 in more than 40 countries including the United States Patent and Trade Office (“USPTO”) and the European Intellectual Property Office (“EUIPO”). It has also used the mark in commerce since 1987. Respondent’s <autozone.org> domain name, registered in 2003, is confusingly similar to Complainant’s mark as it wholly incorporates the AUTOZONE mark and is differentiated only by the addition of the “.org” generic top-level-domain (“gTLD”).

Respondent has no rights or legitimate interests in the <autozone.org> domain name. Respondent is not commonly known by the disputed domain name, nor has the Complainant authorized or licensed Respondent to use the AUTOZONE mark in a domain name or in any other manner. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has used the domain name to either divert traffic intended for Complainant’s website or to reach an inaccessible site with potential malware.

Respondent registered and uses the <autozone.org> domain name in bad faith. Respondent attempts to disrupt Complainant’s business as the disputed domain name diverts users away from Complainant’s website. Further, Respondent’s domain name features advertisements to commercially benefit. Finally, Respondent had actual or constructive notice of Complainant’s AUTOZONE mark prior to registering the disputed domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

(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.

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant asserts rights in the AUTOZONE trademark based upon its registration thereof with the USPTO and the EUIPO. Registration of a mark with the USPTO and other national trademark offices is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the AUTOZONE mark.

Next, Complainant argues that the <autozone.org> domain name is identical or confusingly similar to the Complainant’s mark as it wholly incorporates the AUTOZONE mark and is differentiated by only by the addition of the “.com” gTLD. When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, the Panel may find that the disputed domain name is identical to Complainant’s mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel therefore finds that Respondent’s <autozone.org> is identical to Complainant’s mark per Policy ¶ 4(a)(i).

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues that Respondent has no rights or legitimate interests in the <autozone.org> domain name because Respondent is not commonly known by the <autozone.org> domain name nor has Complainant authorized Respondent to use the AUTOZONE mark. WHOIS information listing a privacy service as the registrant can allow the Panel to find there is no basis to find that the Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information of record, and as confirmed by the concerned registrar, indicates that the <autozone.org> domain name is registered to “LLC Perfect Privacy,” and there is no information to suggest that Respondent is known otherwise or that it was authorized to use Complainant’s AUTOZONE mark. Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Next, Complainant argues that the Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or with a legitimate noncommercial or fair use because the Respondent maintains an inaccessible site with potential malware. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Additionally, use of a disputed domain name to distribute malware may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Here, Complainant provides as evidence images of the disputed domain name’s resolving webpage indicating that the website is “under development” or “may be available”. Complainant further argues that users are potentially susceptible to malware when they are redirected to the inactive website but there is no evidence submitted to support this assertion and so it will not be considered by this Panel. Finally, Complainant provides a screenshot of the disputed domain name’s resolving website dated September 19, 2018, which features what appear to be pay-per-click links[i]. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services.

Registration and Use in Bad Faith

Complainant argues that Respondent had actual or constructive notice of its rights in the AUTOZONE mark based on Complainant’s substantial fame and notoriety, and because of the clear confusion that Respondent had to know would follow from use of the <autozone.org> domain name.[ii] The Panel here finds that any arguments of bad faith based on constructive notice are not relevant because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) (“Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.”) The Panel does agree with Complainant, however, that it is more likely than not that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name based upon the distinctiveness of the term AUTOZONE. Actual knowledge is an adequate foundation upon which to build a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Here, the disputed domain name wholly contains the distinctive AUTOZONE mark. Further, Complainant asserts that its mark was already famous when the disputed domain name was registered in 2003 based on the facts that, at that time, it operated its own high-profile and heavily trafficked www.autozone.com website and that it had thousands of automotive parts stores in the United States making it the largest automotive parts retailer in the country at that time. Respondent has not filed a response or made any other submission to dispute these assertions. Therefore, the Panel finds that Respondent had actual notice of Complainant’s AUTOZONE mark at the time it registered the disputed domain name and that such registration was in bad faith under Policy ¶ 4(a)(iii).

Complainant next contends that Respondent’s bad faith is demonstrated by its use of the <autozone.org> domain name to divert users away from Complainant’s own website. Specifically, Complainant argues that Respondent disrupts Complainant’s business by diverting users to a non-resolving or to a competing pay-per-click website. Use of a disputed domain name to compete or feature competing hyperlinks may demonstrate bad faith under Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”) The Panel notes that Respondent’s <autozone.org> domain name resolved, at various times, to an inactive website with the message, “This web site is under development. Please visit use again. Thank you.” It is noted that the examples of bad faith noted in Policy ¶ 4(b) are not exhaustive and that Panels may consider other factors when determining bad faith. Prior Panels have held that the failure to use a confusingly similar disputed domain name for any real purpose, i.e., inactively holding the name, can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”) In this case the lack of any substantive or legitimate use of the <autozone.org> domain name supports the conclusion that Respondent has registered and used the domain name in bad faith. Complainant also provides a screenshot of the disputed domain name’s resolving website dated September 19, 2018, which displays pay-per-click links in the automotive parts industry. This fits the exploitation of the domain, for commercial gain based on confusion with the AUTOZONE mark as noted in Policy ¶ 4(b)(iv). Therefore, the Panel determines that Respondent’s use of the domain name demonstrates bad faith per Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <autozone.org> domain name be TRANSFERRED from Respondent to Complainant.

Steven M. Levy, Esq., Panelist

Dated: April 16, 2019

[i] Complainant provides a screenshot of the home page associated with the disputed domain name to support this contention but this only shows a number of category headings, not actual links to third-party websites. However, the Panel’s independent review of the <autozone.org> website confirms that there do exist pay-per-click links which lead to various third-party websites that offer goods in the automotive parts industry.

[ii] Complainant also states that it had “previously registered several of its AUTOZONE Marks with the Trademark Clearinghouse to avail itself of the priority registration benefits during the Sunrise period for new Top-Level Domains (‘TLDs’) including the ‘.org’ TLD. For unknown reasons, AutoZone was unable to register the disputed domain name but instead received notification that Respondent had improperly secured the disputed domain name.” This statement in the Complaint is clearly inaccurate and inapplicable to the present case. The .org TLD was launched in 1985 and is not a “new” TLD, and the Trademark Clearinghouse was launched in 2013 (long after the registration of the disputed domain name) only to handle new TLDs. As such, the Panel believes that Complainant’s statement was inadvertently copied and pasted from a prior form document. Complainant’s Representative is advised to use caution in submitting future UDRP complaints.


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