WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Advance Auto Innovations LLC v. Gary Lam, XC2 Case No. D2009-0688 1. The Parties
The Complainant is Advance Auto Innovations LLC of Virginia, United States of America, represented by Leclairryan, United States of America.
The Respondent is Gary Lam, XC2 of Hong Kong, SAR of People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2009. On May 27, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 30, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2009.
The Center appointed Alexandre Nappey as the sole panelist in this matter on June 30, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a company registered under the laws of the United States (“U.S.”). It holds trademark rights on ADVANCE AUTO PARTS, especially various U.S. federal trademark registrations, primarily for use in connection with auto parts and accessories, and sale of auto parts and accessories.
The ADVANCE AUTO PARTS has been continuously and extensively used by the Complainant and its licensee Advance Stores Company since at least March 3, 1984.
The U.S. federal trademarks of the Complainant were filed between 1987 and 1993, and regularly renewed.
The Complainant also holds various domain names consisting of or containing the mark ADVANCE AUTO PARTS.
The disputed domain name was registered on June 15, 2005, more than seven years after the Complainant registered the domain name, on September 29, 1997.
It resolves a website displaying adult content and pornographic sponsored links.
The Complainant sent a cease and desist letter on May, 5, 2009 to the WhoIs privacy service in the name of which the disputed domain name was initially registered. As soon as the complainant filed the present complaint, the registrar displayed the disclosed registrant details. 5. Parties' Contentions A. Complainant
The Complainant asserts that the matter is a classic “typosquatting” case, considering that the domain name in issue is almost identical to the senior ADVANCE AUTO PARTS mark and the U.S. registered trademarks held by the Complainant.
It is also confusingly similar to the domain names of the Complainant, except for the omission of the “n” in the word “advance”.
The Complainant also claims that it did not authorize the Respondent to use the mark ADVANCE AUTO PARTS or any misspelling thereof, whereas the Respondent has never used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary, the Complainant points out the domain name operates a website which consists of pornographic pictures and sponsored links.
The Respondent does not show any right in the disputed domain name.
At last the Complainant claims that there is no evidence that the Respondent has ever legitimately been known as Advace Auto Parts. The only evident and plausible reason for the Respondent to have registered the disputed Domain Name for a website was to intentionally attract Internet users looking for the website of the Complainant and its licensed affiliate for its own commercial gain.
According to the Complainant, the Respondent had actual knowledge of the ADVANCE AUTO PARTS trademark at the time it registered the disputed domain name, having regard to the long and wide use and the subsequent reputation of the mark.
The misspelling of that mark in the disputed domain name was done intentionally and in bad faith to attract, for commercial gain, Internet users to the Respondent's website.
Therefore, the Complainant seeks the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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 in bad faith.
However, under paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”.
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above cited elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the mark ADVANCE AUTO PARTS, especially through various U.S. federal trademark registrations dating back to 1987.
The evidence provided with the Complaint clearly demonstrates a wide and long use of the trademark at least since March 1984.
It is also noted that the Complainant is using its trademark in numerous domain names to resolve to its website, notably the domain name which was registered in September 1997.
The only difference between the Complainant's trademark and the disputed domain name is that the letter “n” in the word “advance” has been omitted in the domain name. Many decisions ruled that minor differences such as this have no effect on the confusing similarity between a trademark and a domain name.
The Complainant asserts that the present case is a classic “typosquatting”. The Panel finds that despite the aforementioned slight difference, there is undoubtedly a close similarity between the disputed domain name and the Complainant's trademark.
See for instance the Panel decision in Crédit Industriel et Commercial S.A., and Confédération Nationale du Crédit Mutuel v. Owen Webster,WIPO Case No. D2006-0165, “The disputed domain names are almost identical to the Complainant's trademarks, the only difference being in each case the lack of only one letter”.
Therefore the Panel is satisfied that the Complainant owns rights in the ADVANCE AUTO PARTS trademark, and finds that the domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent has no connection or affiliation with the Complainant, who has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant's trademarks.
The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the disputed domain name.
The Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, the Respondent is, for his own commercial gain, diverting Internet users looking for the Complainant's services to a website displaying adult content and pornographic commercial links. Such use cannot be considered bona fide.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must demonstrate that the disputed domain name has been registered and is used in bad faith.
As claimed by the Complainant, the Respondent cannot have chosen the domain name randomly, having consideration to the reputation of the trademark ADVANCE AUTO PARTS and the minor difference between the disputed domain name and the trademark.
It is therefore the Panel's opinion that the Respondent had actual knowledge of the Complainant and its rights at the time he registered the disputed domain name, and by intentionally removing one letter from the trademark, it registered the domain in bad faith.
Numerous decisions ruled that actual knowledge of the Complainant at the time of the registration may indicate bad faith registration, see BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325.
The Panel is also convinced by the evidence provided with the Complaint and the Respondent's default that the Respondent tried to take advantage of the Complainant's reputation and goodwill diverting Internet users and potential customers to a pornographic website.
The decision in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011, cited by the Complainant ruled that the Respondent was in bad faith in similar circumstances.
Having regard to the evidence supporting the complaint, it is clear to the Panel that the Respondent has a history of cybersquatting and typosquatting and has been found in bad faith in numerous prior decisions (at least nine) issued under the Policy before the Center. See for instance the following decision cited by the Complainant Yahoo! Inc. and Overature Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, allda Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896.
Considering that many decisions against the Respondent were decided among similar lines, the Panel finds that the Respondent has been engaged in a pattern of having registered and using domain names in bad faith.
Therefore, the Panel is satisfied that the requirement of paragraph 4(a)(iii) of the Policy is met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Dated: July 14, 2009
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