ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION National Automotive Parts Association LLC, Genuine Parts Company v. Ralph Wood Case No. D2024-3192 1. The Parties The Complainants are National Automotive Parts Association LLC and Genuine Parts Company, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States. The Respondent is Ralph Wood, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2024. On August 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Undisclosed Domain Name Registrant c/o Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2024, 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 August 9, 2024. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2024.
page 2 On September 18, 2024, the Complainant submitted a supplemental filing with an additional item of evidence, a customer complaint email dated September 13, 2024. The Center appointed W. Scott Blackmer, Kiyoshi Tsuru and Dennis A. Foster as panelists in this matter on October 3, 2024. The Panel finds that it was properly constituted. Each member of 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 Complainants are National Automotive Parts Association LLC (“NAPA”), a limited liability company established under Georgia law, and Genuine Parts Company (“Genuine”), a corporation established under Georgia law, both headquartered at the same address in Atlanta, Georgia, United States. The Complainant’s website at “www.napaonline.com” describes how Genuine and other independent distributors of automobile parts and accessories founded NAPA in 1925, and how Genuine ultimately became the sole member of the association in 2012. As it is evident from the Complaint and the Complainant’s website that the parties share ownership and other business interests, including licensing of the trademarks at issue, the Panel finds it appropriate to accept both as Complainants in this proceeding and refers to NAPA and Genuine collectively hereafter as the “Complainant”, unless one of the Complainants is specifically indicated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.1 (multiple complainants). Since 1925 the Complainant and predecessor legal entities have sold a range of automobile, truck, and other vehicle parts around the world under NAPA trademarks. This now comprises more than 500,000 unique parts, tools, and paints, sold through more than 6,000 NAPA-branded retail stores in the United States, as well as more than 16,000 automotive service centers. The Complainant spends more than USD 50 million annually on marketing, advertising and promoting its products and trademarks, including sponsoring racing, soccer, and baseball teams. The Complainant’s marks are advertised in the stores and shops, in print and broadcast media, online and on the Complainant’s social media pages. The record includes evidence of consumer and industry recognition of the NAPA mark, including 2020 “Best of the Best” plaudits by the American Automobile Association for four of the Complainant’s NAPA AutoCare Centers. There is ample evidence that the Complainant’s NAPA and NAPA-derivative marks are well recognized, particularly in the United States. Indeed, more than a decade ago, another WIPO UDRP panel concluded as follows: “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.” National Automotive Parts Association v. Kanter Associates SA/ Whois Privacy Services Pty Ltd., WIPO Case No. D2011-1435. Along with selling parts and repair services, the Complainant offers the “NAPA AUTOCARE Peace of Mind Limited Warranty” service through more than 16,000 authorized NAPA AutoCare Centers in North America. Repairs performed at these service centers include the Complainant’s “Peace of Mind” warranty covering parts and labor for 24 months or 24,000 miles, honored at any NAPA AutoCare Center. The Complainant advertises this warranty service extensively and describes it on the “Peace of Mind Warranty” page of the Complainant’s website. The Complainant NAPA holds numerous trademark registrations in the United States and other countries, including the following:
page 3 Mark Jurisdiction Registration Number Registration Date Goods or Services NAPA (word) United States 840448 December 12, 1967 International Class 11, automotive filters NAPA (word) United States 924663 November 30, 1971 International Classes 7, 8, 12, gears, sprockets, hand tools, etc. NAPA (word and design – blue and yellow hexagon logo) United States 4228708 October 23, 2012 International Class 35, distributorship of automotive parts, etc. NAPA (word) United States 2771415 October 7, 2003 International Class 16, distribution and marketing of vehicle parts, vehicle care and servicing, etc. The Registrar reports that the disputed domain name was created on June 25, 2023, and was registered in the name of a domain privacy service. After receiving the Complaint in this proceeding, the Registrar identified the underlying registrant as the Respondent Ralph Wood, showing no organization and listing a postal address in the State of Colorado, United States, with a Gmail contact email address. The disputed domain name has resolved at times, including at the time of this Decision, to a website (the “Respondent’s website”) headed “NAPA Warranty” with a blue and yellow NAPA logo in the same hues as the Complainant’s figurative trademarks, with the tagline “Accepted Nationwide”. The home page features a toll-free telephone number and information about roadside assistance and extended vehicle warranty providers. Screenshots captured by the Internet Archive’s Wayback Machine from April 2024 show that the home page of the Respondent’s website also displayed the Complainant’s registered figurative mark under the heading “Brands we work with”. The “Our Plans” page of the website offers a “30-day money-back guarantee” and lists an address and telephone number in Chicago, Illinois, United States. The copyright notice on the Respondent’s website is in the name of “NAPA Warranty”. The Complainant’s representative sent a letter to the company hosting the Respondent’s website on June 28, 2024, complaining of trademark infringement, noting that the Illinois Secretary of State had no record of a registered company called “NAPA Warranty”, and that Google Reviews had a single, 1-star review for the company, with the comment, “SCAM!!! BEWARE!!!” The Complainant requested that the website be deactivated. The hosting company replied that it would require a subpoena to identify the website owner. The Complainant’s logo was removed from the Respondent’s website, however, after this letter was sent. The Complainant investigated the registration details for the disputed domain name, once those were disclosed, and found that the telephone number is registered to another person and the email address, which appears to be associated with a third-party insurance company, produced no results. The postal address is that of a large office building, but no suite number is given. Customer reviews for “Napa Warranty” posted on various platforms complain of bad service and unresponsiveness. The Complainant notes that the Respondent is listed as president of “Champion Car Warranty” at the same postal address in Colorado Springs, Colorado that is given as the Respondent’s address in the registration of the disputed domain name. That company has an “F” rating (not accredited) by the Better Business Bureau, due to multiple consumer complaints.
page 4 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to its registered NAPA marks, merely adding the word “warranty”, which does not obviate confusion. The Complainant states that the Respondent is not associated with the Complainant and has no permission to use the NAPA marks. The Complainant argues that there is no evidence that the Respondent has registered a corresponding company name or trademark or, indeed, that the Respondent was operating a legitimate business through its website, considering that the Respondent falsely claimed to be working with the Complainant and given the negative reviews from consumers who attempted to use the Respondent’s advertised services. The Complainant concludes that the disputed domain name was registered and used in bad faith, in an effort to attract Internet users familiar with the Complainant’s trademark for commercial profit. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) and the respondent has no rights or legitimate interests in respect of the disputed domain name; (iii) and the disputed domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 6.a. Supplemental Filing The Complainant’s supplemental filing consists of an email proffering as supplemental evidence a customer email dated September 13, 2024, reporting that the customer purchased an extended warranty policy through the Respondent’s website in March 2024 for nearly USD 2,000, believing it was connected to the Complainant’s brand. The customer made repeated requests for a paper copy of the policy but never received one. The credit card payment went to another company linked to a different extended warranty program, and the customer was not able to contact anyone there. The company that processed the charge ultimately sent the customer’s bank a copy of the electronically signed policy, which could not be cancelled because more than 30 days had passed by that time. The customer also had no response calling the number provided for claims. Unsolicited supplemental filings are generally discouraged unless specifically requested by the Panel, but they may be taken into consideration in exceptional circumstances. WIPO Overview 3.0, section 4.6. This is such a case. The email was not available before the Complaint was filed, and it is potentially relevant in establishing confusing similarity, the claimed absence of legitimate interests, and the Respondent’s bad faith. The supplemental filing was sent to the Respondent as well as the Center, using the contact details furnished by the Registrar, and the Respondent did not object (consistent with the Respondent’s failure to submit a Response to the Complaint itself).
page 5 The Panel, therefore, accepts the supplemental filing for consideration as part of the record in this proceeding. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark (the registered NAPA word mark and figurative marks in which “NAPA” is a dominant element) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “warranty”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Respondent’s former website advertised an extended automotive warranty service similar to the Complainant’s with the name “NAPA Warranty”, giving an address in Chicago, Illinois, but there is no evidence of such a legal entity in Illinois. The false claims on the Respondent’s website of doing business with the Complainant, and the customer complaints such as those found in the Complainant’s supplemental filing and the online reviews attached to the Complaint, suggest a “scam” operation rather than a bona fide offering of goods or services. The Respondent has not come forward with evidence to the contrary. In any event, even if the Respondent was simply engaging in “bait and switch” tactics, using a competitor’s mark to redirect Internet users to a competing site, as the Respondent did, does not support a claim to rights or legitimate interests in a confusingly similar domain name. WIPO Overview 3.0, section 2.5.3. Panels have found that the use of a domain name for illegal activity (here, claimed impersonation/passing off or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0,
page 6 section 2.13.1. It does not appear that the Respondent has been charged with fraud to date, but it is telling that the Respondent removed the Complainant’s trademarked logo from the “Brands we work with” section of the home page of its website after receiving the Complainant’s demand letter. The customer letter submitted with the Complainant’s supplemental filing shows that the disputed domain name and the Respondent’s website successfully impersonated the Complainant or at least conveyed the false impression of an association with the Complainant. This could not establish rights or legitimate interests for Policy purposes. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent was clearly aware of the Complainant and its marks, as the Respondent’s website reproduced the Complainant’s registered figurative trademark and expressly (and falsely) claimed to “work with” the Complainant. The Respondent advertised the same kind of extended automotive warranty service that the Complainant offers, using the disputed domain name that exactly reproduced the Complainant’s word mark and added the word “warranty.” Thus, the facts of this proceeding accord with the example of bad faith given in the Policy, paragraph 4(b)(iv), intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances also may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the use of a domain name for illegal activity (here, claimed impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. As discussed above, elements of the Respondent’s website impersonated the Complainant, and the Respondent expressly and falsely claimed to “work with” the Complainant. These acts reflect bad faith, as do the Respondent’s efforts to avoid identification by giving inaccurate domain registration details and apparently inaccurate contact information on the Respondent’s website, as well as the Respondent’s failure to reply to correspondence from customers, the Complainant, the Center, or, indeed, to submit a Response in this proceeding. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel concludes that the Complainant has established the third element of the Policy.
page 7 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 disputed domain name be transferred to the Complainant Genuine Parts Company (as requested). /W. Scott Blackmer/ W. Scott Blackmer Presiding Panelist /Kiyoshi Tsuru/ Kiyoshi Tsuru Panelist /Dennis A. Foster/ Dennis A. Foster Panelist Date: October 17, 2024
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