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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Avnet, Inc. v. Richard J. Rosenberg

Case No. DTV2001-0016

 

1. The Parties

The Complainant in this administrative proceeding is Avnet, Inc. ("Avnet" or "Complainant"), an incorporated entity organized and existing under the laws of the State of New York, with its principal place of business at 2211 South 47th Street, Phoenix, Arizona 85034, USA.

The Respondent in this proceeding is Richard J. Rosenberg ("Rosenberg" or "Responden t") located at 71 Tripp Street, Mount Kisco, New York 10549, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <avnet.tv> (the "Domain Name"). The registrar is The .tv Corporation International (the "Registrar") located at 1100 Glendon Avenue, 8th Floor, Los Angeles, California 90024, USA.

 

3. Procedural History

On June 19, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On June 22, 2001, the Center received hardcopy of the Complaint. On June 21, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On June 22, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On June 29, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 16, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On July 25, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Avnet is a Fortune® 300 Company with over $12 billion (USD) in annual sales in approximately sixty countries worldwide. Since at least as early as 1955, Complainant has been in the business of offering a full range of services, including, without limitation, warehouse storage and packaging goods, assembly and delivery of electronics, electrical and computer equipment and components, and advisory, consulting and distribution services in the field of electronics, electrical equipment and computers and computer components. Complainant offers these goods and services to companies and individuals by a variety of means, including, but not limited to, websites on the global computer network, such as <avnet.com>.

Complainant is the owner of over 150 domestic and foreign trademark and service mark registrations for AVNET and marks including AVNET, including without limitation, U.S. Trademark Registration No. 1,481,121 for the mark AVNET, registered on March 15, 1988, and claiming first use of March 5, 1986, in class 42 for "distributorship services in the field of electrical, electronic and computer equipment, electric motors and machinery"; and U.S. Service Mark Registration No. 2,237,995 for the mark AVNET, registered on April 13, 1988, and claiming first use of July 1, 1987, for "warehouse storage of goods and packaging articles for transportation and assembly and delivery of computer products, electronic and electrical devices, instruments and components, computer products" in International Class 39, "assembly of computer products and components for others" in International Class 40, and "advisory and consultation services in the field of warehouse storage goods, packaging articles for transportation, and computer programming for others" in International Class 42. Collectively, Complainant’s trademarks and service marks are referred to as the "Marks."

Additionally, Complainant is the owner of numerous domain names including and related to its Marks, including, without limitation, the domain name <avnet.com> registered on May 22, 1990, and the domain names <askavnet.com>, <askavnet.org>, <askavnet.net>, <avnet-design.com>, <avnet-design.net>, <avnet-design.org>, <avnet-direct.com>, <avnet-direct.net>, <avnet-direct.org>, <avnet-es.com>, <avnet-es.net>, <avnet-es.org>, <avnet-express.com>, <avnet-express.net>, <avnet-express.org>, <avnet1.com>, <avnet1.org>, and <avnet1.net>, among others (collectively, the "Complainant’s Domain Names"). Complainant’s website was listed as one of Forbes magazine’s "Best of the Web" in the Computers & Electronics category. Complainant has expended and continues to expend a significant amount of time and money to advertise and promote Complainant’s services through its distinctive Marks, Domain Names and website.

On or about May 29, 2001, Complainant first learned that the Domain Name had been registered by Respondent. The domain name resolves to the website located at <.tv> with a notice that states "This .tv domain name has been registered." On June 14, 2001, Complainant, through its attorneys, requested that Respondent cease and desist from using the Domain Name on the basis that it confusingly similar to Complainant’s Marks and Domain Names. On June 18, 2001, Complainant’s attorneys received an email correspondence from Respondent stating the following: "I received your FedEx this morning about the use of <avnet.tv>. However, I received an offer to sell the domain name to an electronics company a few days ago. I’m certain that you can follow up with ‘whois@www.tv’". Complainant’s attorneys responded to this email, stating that they assumed that Respondent would disclose the conflict over the Domain Name to the proposed buyer. Thereafter, Respondent sent an email to Complainant’s counsel, stating "I have not contacted counsel since I just received your letter this morning. Give me a day or two to check all this out. I’ve sold 5 domain names in the past without counsel so really do not know whats involved."

Later, Complainant’s attorneys received an email from Respondent stating: "I am certain you’re a busy attorney and the last thing you need is some guy in New York with the domain name of <avnet.tv>. I have not contacted counsel and have not, as of yet, transferred the domain name to the company that contacted me. In addition, I certainly will not use the domain name to confuse consumers into believing that I am affiliated with Avnet. As I see it, I must notify the purchaser of <avnet.tv> of your letter dated June 14, 2001, or as per your instructions, transfer the Domain Name to your client. Or, just just [sic] hold the name until Avnet takes action under ICANN ’s Uniform Domain Name Dispute Resolution Policy. If your client will pay me the sum of $50,000, I will immediately transfer the Domain Name <avnet.tv> to your client."

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the trademark AVNET.

ii. Complainant argues that the Domain Name is identical, and thus confusingly similar, to the AVNET mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the trademark AVNET with the addition of a top-level domain name code. The second level of Respondent’s Domain Name <avnet.tv> is identical to Complainant’s federally registered mark AVNET.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names. The Respondent has no rights or legitimate interest in the Domain Name for at least the following reasons: (i) Respondent has not used or prepared to use the Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent’s Domain Name not reflect Respondent’s name or its corporate identity; and (iii) Respondent’s Domain Name was registered on September 4, 2000, over twenty-four years after Complaint’s first use of its Marks, twelve years after Complainant’s mark was registered with the U.S. Patent and Trademark Office, and ten years after Complainant registered its domain name <avnet.com>.

iv. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii). Complainant alleges that the Domain Name should be considered as having been registered and used in bad faith for at least the following reasons:

(1) Respondent has made it a practice to register domain names for the purpose of selling them. Respondent specifically states that to date he has sold five domain names to others. Complainant alleges that such transactions were based on Respondent seeking an amount in excess of his costs to acquire same if similar to his offer in this case.

(2) Complainant asserts that the mere registration of multiple domain names does not necessarily indicate a pattern of bad faith on the part of a registrant. However, the Panel in Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056, held that the registration of just three domain names, all incorporating third party marks, was a "sufficient basis for the inference to be drawn that a pattern of conduct exists." By registering and then selling at least five other domain names, Complainant respectfully asserts that Respondent has registered and used same in bad faith.

(3) Complainant asserts that Respondent evidenced bad faith by offering to sell the domain name for $50,000, far in excess of Respondent’s out-of-pocket costs of registration, where the value of the domain name would be largely based on Complainant’s trademark registrations. As stated in Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046, "Under the Policy, trafficking in a domain name for profit demonstrates bad faith where the registrant lacks a legitimate prior interest in the name." Respondent lacks any prior interest in the Domain Name. Complainant submits that, by Respondent’s offering to sell to Complainant a domain name for which Respondent has no legitimate prior interest, and for which Complainant has held as a trademark for over twenty-five years, Respondent has evidenced bad faith by trafficking for profit in a domain name for which it has no legitimate prior interest.

(4) Respondent’s web page resolves to the .tv Corporation website as noted above. Complainant asserts that Respondent is not actively using the Domain Name. Under Telstra Corporation Limited v. Nuclear Marshmallows, "the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." WIPO Case No. D2000-0003. Like the complainant in Telstra, Complainant submits that Respondent’s inactivity with the Domain Name <avnet.tv>, especially when coupled with Respondent’s offer to sell the domain name in the manner described above, is further evidence of Respondent’s bad faith in registering and using same.

B. Respondent’s contentions

i. Respondent fails to dispute that the Complainant has registrations of the trademark AVNET.

ii. Respondent fails to dispute that the Domain Name is identical, and thus confusingly similar, to the AVNET mark, pursuant to Paragraph 4(a)(i) of the Policy.

iii. Respondent fails to assert that he has rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii).

iv. Respondent fails to deny that he registered or used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Prove Up of Elements

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the trademark AVNET. Respondent fails to contest Complainant’s assertion. The Sole Panelist finds that Complainant’s trademark registrations are valid and subsisting and serve as prima facie evidence of Complainant’s ownership and the validity of the AVNET mark. 15 U.S.C. § 1115. The Sole Panelist finds that Complainant’s registrations are incontestable and conclusive evidence of Complainant’s ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The Sole Panelist finds that Respondent has not met his burden.

Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the Marks.

Identity or Confusing Similarity

Complainant argues that the Domain Name is identical, and thus confusingly similar, to the AVNET mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the trademark AVNET with the addition of a top-level domain name code. The second level of Respondent’s Domain Name <avnet.tv> is identical to Complainant’s federally registered mark AVNET.

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the Marks.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000), (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000), (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).

The addition of the phrase ".com" or ".org" is non-distinctive because it is a gTLD required for registration of a domain name.

In the present case, the addition of the gTLD ".tv" is non-distinctive for the same reason. Therefore, the Sole Panelist finds that the Domain Name is identical with and confusingly similar to the AVNET mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. Complainant asserts that the Respondent has no rights or legitimate interest in the Domain Name for at least the following reasons: (i) Respondent has not used or prepared to use the Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent’s Domain Name not reflect Respondent’s name or its corporate identity; and (iii) Respondent’s Domain Name was registered on September 4, 2000, over twenty-four years after Complaint’s first use of its Marks, twelve years after Complainant’s mark was registered with the U.S. Patent and Trademark Office, and ten years after Complainant registered its domain name <avnet.com>.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainant alleges that Respondent has no relationship with or permission from Complainant for the use of the AVNET marks.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has made a prima facie showing that that the Respondent lacks rights to or legitimate interests in the Domain Names. Respondent has failed to rebut the evidence of Complainant. Furthermore, the file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

Complainant alleges that the Domain Name should be considered as having been registered and used in bad faith for at least the following reasons:

(1) Respondent has made it a practice to register domain names for the purpose of selling them. Respondent specifically states that to date he has sold five domain names to others. Complainant alleges that such transactions were based on Respondent seeking an amount in excess of his costs to acquire same if similar to his offer in this case.

(2) Complainant asserts that the mere registration of multiple domain names does not necessarily indicate a pattern of bad faith on the part of a registrant. However, the Panel in Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056, held that the registration of just three domain names, all incorporating third party marks, was a "sufficient basis for the inference to be drawn that a pattern of conduct exists." By registering and then selling at least five other domain names, Complainant respectfully asserts that Respondent has registered and used same in bad faith.

(3) Complainant asserts that Respondent evidenced bad faith by offering to sell the domain name for $50,000, far in excess of Respondent’s out-of-pocket costs of registration, where the value of the domain name would be largely based on Complainant’s trademark registrations. As stated in Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046, "Under the Policy, trafficking in a domain name for profit demonstrates bad faith where the registrant lacks a legitimate prior interest in the name." Respondent lacks any prior interest in the Domain Name. Complainant submits that, by Respondent’s offering to sell to Complainant a domain name for which Respondent has no legitimate prior interest, and for which Complainant has held as a trademark for over t wenty-five years, Respondent has evidenced bad faith by trafficking for profit in a domain name for which it has no legitimate prior interest.

(4) Respondent’s web page resolves to the TVC website as noted above. Complainant asserts that Respondent is not actively using the Domain Name. Under Telstra Corporation Limited v. Nuclear Marshmallows, "the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. " WIPO Case No. D2000-0003. Like the complainant in Telstra, Complainant submits that Respondent’s inactivity with the Domain Name <avnet.tv>, especially when coupled with Respondent’s offer to sell the domain name in the manner described above, is further evidence of Respondent’s bad faith in registering and using same.

The Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i) based upon the Respondent’s offer to sell the Domain Name for $50,000.

In addition, the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no use of the Domain Name. Complainant alleges that Respondent has not developed any active website at <avnet.tv>.

In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

The evidence establishes inaction by Respondent in the use the Domain Name to post any content on the Internet or for any other legitimate purpose.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name <avnet.tv> is confusingly similar to Complainant’s Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Avnet, Inc.

 


 

Richard W. Page
Sole Panelist

Dated: August 13, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/dtv2001-0016.html

 

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