Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. ADVANCEAUTOSPARTS.COM / ADVANCWAUTOPARTS.COM / ADVAVCEAUTOPARTS.COM, Privacy Protect
Claim Number: FA1302001486522
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ADVANCEAUTOSPARTS.COM / ADVANCWAUTOPARTS.COM / ADVAVCEAUTOPARTS.COM, Privacy Protect (“Respondent”), Shanghai, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceautosparts.com>, <advancwautoparts.com>, and <advavceautoparts.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2013; the National Arbitration Forum received payment on February 22, 2013.
On February 27, 2013, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <advanceautosparts.com>, <advancwautoparts.com>, <advavceautoparts.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com 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 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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 email@example.com, firstname.lastname@example.org, email@example.com. Also on March 5, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
i. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ADVANCE AUTO PARTS mark (e.g., Reg. No. 1,815,267 filed April 12, 1993 and registered Jan. 4, 1994).
ii. Respondent registered the <advanceautosparts.com>, <advancwautoparts.com>, and <advavceautoparts.com>, on Mar. 16, 2007 according to the Complaint, and on Dec. 31, 1969 according to WHOIS information attached to the Complaint.
iii. The addition of the generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) confusing similarity comparison.
iv. The disputed domain names are identical to Complainant’s mark, with the addition of a single letter or the misspelling of a single letter.
i. Respondent is not commonly known by the disputed domain names, based on the WHOIS information and the fact that Complainant did not authorize Respondent to use its mark.
ii. Respondent is using the disputed domain names to redirect unsuspecting internet users to a website featuring generic links to third party websites, some of which directly compete with Complainant’s services.
i. Respondent is using the disputed domain names in connection with “click through” websites, where it likely receives revenue when misdirected Internet users click on the displayed links. This is bad faith under Policy ¶ 4(b)(iv).
ii. Respondent’s pay-per-click links promote products that compete with Complainant, which is disruptive of Complainant’s business and evidence of bad faith under Policy ¶ 4(b)(iii).
iii. Respondent is typosquatting, which is itself evidence of bad faith.
iv. Respondent holds registrations on other domain names that appear to be examples of typosquatting. This represents a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Respondent failed to submit a Response in this proceeding.
Complainant owns multiple USPTO registrations for the ADVANCE AUTO PARTS mark (e.g., Reg. No. 1,815,267, filed Apr. 12, 1993 and registered Jan. 4, 1994). Complainant, through its representative Citizenhawk, Inc., alleges that the disputed domains were registered no earlier than Mar. 16, 2007, referring to WHOIS information attached to the Complaint. However, the WHOIS papers submitted by Complainant indicate creation and expiration dates of Dec. 31, 1969 for each of these domains (which appear factually impossible).
By Interlocutory Order, the parties were requested to submit any arguments and documentary evidence which they wished to rely on with respect to the dates when the disputed domains were registered. Complainant provided no response to the Order and no evidence to support its bare assertion that the domains were registered on Mar. 16, 2007. Thus, Complainant has failed to prove that it has rights predating the registration dates of the disputed domains.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. While Complainant does not address the issue of multiple respondents, the Panel notes that each registrant in the WHOIS information is listed as the disputed domain name itself, and each has an identical contact address. The Panel finds that this constitutes sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceeding.
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain names. See Intermark Media, Inc. v. Wang Logic Corp., FA139660 (NAF Feb. 19, 2003). As Complainant has not demonstrated that its rights pre-date Registrant’s domain names, in spite of having been provided a second opportunity to do so in response to the Panel’s Interlocutory Order, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
Because the Panel has determined that Complainant has not satisfied this requirement of Policy § 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain names or whether Respondent registered or used the domain names in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <advanceautosparts.com>, <advancwautoparts.com>, <advavceautoparts.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: April 25, 2013
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