Complainant is AutoZone Parts, Inc. of Memphis, Tennessee, United States of America, represented by Alston & Bird, LLP, United States of America.
Respondent is Tom Nguyen of Worcester, Massachusetts, United States of America. 2. The Domain Name(s) and Registrar(s)
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On December 15, 2010, GoD, Inc. 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, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(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 Respondent of the Complaint, and the proceedings commenced on January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2011.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 2, 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
Complainant is a leading retailer and distributor of automotive replacement parts and accessories, operating more than 4,400 AUTOZONE branded retail stores in the United States, Mexico, and Puerto Rico.
Complainant has allegedly used its AUTOZONE Trademark and Service mark since at least as early as 1987 in connection with the sale of automotive parts and accessories.
Complainant owns a number of worldwide registrations for the AUTOZONE trademark and service mark. Some of these registrations are:
United States Registrations
AUTOZONE and Design, Registration No. 1,496,638, registered July 19, 1988;
AUTOZONE and Design, Registration No. 1,501,718, registered August 23, 1988; and
AUTOZONE, Registration No. 1,550,569, registered August 1, 1989
European Community Registrations
AUTOZONE and Design, CTM Registration No. 1,084,078; registered May 15, 2001; and
AUTOZONE, CTM Registration No. 1,083,633; registered December 16, 2000
Additionally, Complainant sells automotive parts and accessories worldwide through its website, located at the domain name .
Respondent registered the Domain Name on October 20, 2008. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is confusingly similar to its registered trademark, which it has continuously and exclusively used since 1987. Respondent registered the Domain Name on October 20, 2008, well after Complainant established rights in its AUTOZONE mark. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, and that it was registered in bad faith. In particular, Complainant alleges that Respondent registered the Domain Name to redirect Internet users to a for-profit pornographic website in order to profit off the substantial fame and goodwill of the AUTOZONE mark. Complainant argues that, in light of the substantial fame and notoriety of the AUTOZONE marks, it is inconceivable that Respondent could have registered the Domain Name without knowledge of Complainant’s rights in its mark. Such knowledge alone constitutes evidence of bad faith registration and use of the Domain Name.
Respondent’s bad faith registration and use of the Domain Name is further found in Respondent’s offer to sell the name to AutoZone for USD 40,000 in an email dated February 8, 2009 from Respondent to Complainant’s counsel. This amount appears to be well in excess of any reasonable out of pocket expenses Respondent has incurred in connection with the Domain Name, and evidences Respondent’s intent to profit from the Domain Name. Thus, bad faith registration and use is established by the fact that Respondent profits from the redirecting of traffic to a pornographic website, but also by holding the Domain Name hostage for an exorbitant ransom in order to discontinue further illegitimate use of Complainant’s mark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. (Policy, paragraph 4(a).)
Because Respondent is in default, the Panel may draw negative inferences from Respondent’s default (Rules, paragraph 14(b)). However, the Rules also require that Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3). A. Identical or Confusingly Similar
Complainant has rights in the AUTOZONE trademark and service mark. Complainant owns trademark and service mark registrations worldwide for the AUTOZONE word mark and AUTOZONE and Design marks. Complainant also is the owner of , which was presumably registered prior to October 20, 2008, the registration date of the Domain Name.
The Panel finds that the Domain Name is identical to Complainant’s registered AUTOZONE mark. The generic suffix “.me” is not taken into account in the comparison required by paragraph 4(a)(i) of the Policy. Panelists have long held that the addition of the top level domain (TLD) suffix is irrelevant in an examination of identity or confusing similarity. Sidestep, Inc. v. Anna Valdieri/Marco Ferro,WIPO Case No. D2007-0212 (“…it is well-established that [top-level domain suffixes] should not be considered in making [a confusingly similar] determination.”); Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (“the addition of the [gTLD] name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).
Therefore, this Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of Respondent in the Domain Name: (a) there is no evidence before the Panel that Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the Domain Name; (b) Respondent is not authorized or licensed by Complainant to use the AUTOZONE trademark or to register and use the Domain Name; (c) there is no evidence that Respondent has ever been commonly known by the Domain Name; and (d) there is no evidence of legitimate noncommercial or fair use of the Domain Name.
Complainant has made a prima facie case in support of its allegations and, due to this, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Re-directing a confusingly similar domain name to a pornographic website does not qualify as a bona fide offering of goods or services. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,WIPO Case No. D2003-0161.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that Respondent has ever been commonly known by the Domain Name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name.
Thus, in view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Because Complainant’s AUTOZONE mark is so widely recognized, it is likely that Respondent was aware of Complainant’s rights in the AUTOZONE mark when it registered the Domain Name more than twenty years after the first use of the AUTOZONE mark. Registration of a domain name that is confusingly similar to a well-known mark by a party that lacks rights, legitimate interests or a relationship with the trademark owner is evidence of bad faith registration. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
Respondent uses the Domain Name in bad faith to redirect users to a website featuring pornographic material. Respondent intentionally creates confusion between the Domain Name and Complainant’s famous mark, lures users to its “” website and then presents to them graphic pornographic images that have no connection to Complainant. Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A.,WIPO Case No. D2006-1271.
Respondent offered to sell the Domain Name to Complainant for USD 40,000. Additionally, after the commencement of these proceedings and after the Panel had been appointed, the Center received e-mail correspondence from Respondent offering to sell the Domain Name for USD 5,000. These offers, which exceed Respondent’s out of pocket expenses to buy the Domain Name, support the Panel’s finding of bad faith. See Custom Bilt Metals v. Conquest Consulting,WIPO Case No. D2004-0023 (“Respondent’s demand that [c]omplainant pay $46,000 for transfer of the domain name also supports the [p]anel’s finding of bad faith.”).
The Panel therefore finds that Complainant has proved Respondent’s bad faith in registering and using the Domain Name under paragraph 4(b)(ii) and (iv) of the Policy. 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: February 17, 2011
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