The Complainant is National Automotive Parts Association of Atlanta, United States of America, represented by Cook Alex Ltd. Intellectual Property Law, United States of America.
The Respondent is Kanter Associates SA of City of Panama, Panama/ Whois Privacy Services Pty Ltd. of Fortitude Valley, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2011. On August 25, 2011, the Center transmitted by email to F a request for registrar verification in connection with the Domain Name. On August 26, 2011, F transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 1, 2011.
The Center verified that the Complaint together with the amended 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 September 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2011.
The Center appointed Ian Lowe as the sole panelist in this matter on October 7, 2011. 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
Since 1925, the Complainant has sold a range of numerous automobile, truck and other vehicle parts in the United States and around the world under NAPA trademarks. The range of parts has grown rapidly and now extends to some 320,000 parts including batteries, valves, bearings, cylinders, mufflers, brake components, shock absorbers, mirrors, air conditioners, gaskets, belts and seals as well as hand tools and paints.
The Complainant is the registered proprietor of multiple trademarks comprising NAPA including United States registration number 1,471,743 NAPA AUTO PARTS registered on January 5, 1988, and number 1,821,883 NAPA THE PARTS STORE registered on February 15, 1994. The Complainant also owns over 30 other trademark registrations around the world in respect of these and similar marks. There are now some 6,000 auto parts stores that display the NAPA AUTO PARTS or NAPA THE PARTS STORE service mark on their storefronts.
The Complainant spends more than USD 50 million annually on marketing, advertising and promoting its products and trademarks, including sponsoring soccer and baseball teams.
The Domain Name was registered on January 18, 2006. At the date of the Complaint, the Domain Name resolved to a parking or landing website listing 10 main hyperlinks that in turn open additional web pages with links to other websites including those of competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name wholly incorporates the Complainant’s mark NAPA AUTO PARTS, and three of the words comprised in the Complainant’s mark NAPA THE PARTS STORE, and that accordingly the Domain Name is confusingly similar to registered trademarks in which the Complainant has rights.
The Complainant further submits that the Respondent has no rights or legitimate interest in the Domain Name. Its use of the Domain Name to resolve to a parking page which comprises links to other websites that in turn include links to competitors of the Complainant does not amount to a bona fide offering of goods or services. On the contrary, the website hosted at the Domain Name misleadingly diverts Internet users to pages that offer among other things sponsored links to directly competing products.
The Complainant also contends that the Domain Name was registered and is being used in bad faith. The Respondent has no rights in names comprised in the Domain Name and, on the contrary, must have known of the Complainant’s rights at the time the Domain Name was registered, some 20 years after the Complainant began using the registered marks NAPA AUTO PARTS and NAPA THE PARTS STORE. The Respondent’s conduct is clearly designed to disrupt and harm the Complainant’s business by diverting potential customers away from the Complainant’s authentic website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove 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 in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has long-standing, uncontested rights in NAPA trademarks including NAPA AUTO PARTS and NAPA THE PARTS STORE in a number of territories including the United States. It has carried on business under the NAPA name and operated retail stores under the trademarks for many years. Ignoring the suffix “.com”, the Domain Name differs from the Complainant’s mark NAPA AUTO PARTS only by the addition of the generic word “store” which is itself part of the Complainant’s trademark NAPA THE PARTS STORE.
The Panel accordingly finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states, the consensus view is that once a complainant makes out a prima facie case on this element then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. The Respondent has chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint.
The Respondent has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Domain Name was registered more than 80 years after the Complainant started using the mark NAPA in commerce, and almost 18 years after the Complainant registered the NAPA AUTO PARTS trademark. No licence, permission, authorization or consent was granted by the Complainant to use NAPA or NAPA AUTO PARTS in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
In the Panel’s view, it is overwhelmingly likely that the Respondent had the Complainant’s marks in mind when it registered the Domain Name. The inescapable conclusion is that the Respondent registered and has used the Domain Name to operate a website with the intention that Internet users would be confused into believing that it was operated by or with the consent of the Complainant or was authorised by or associated with the Complainant. The Respondent’s exploitation of the Complainant’s mark with a view to commercial gain through sponsored links is paradigm bad faith registration and use for the purposes of the Policy.
In the circumstances the Panel finds that the Domain Name was registered and is being used in bad faith. 7. Decision
For 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.
Ian Lowe
Sole Panelist
Dated: October 21, 2011
Full & Egal Universal Law Academy