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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Huppin`s Hi-Fi Photo and Video, Inc. v. AG Distributing, Domains By Proxy, Inc.

Case No. D2009-0857

1. The Parties

Complainant is Huppin`s Hi-Fi Photo and Video, Inc. (the "Complainant"), a corporation incorporated under the laws of the State of Washington, with a principal place of business located in Spokane, State of Washington, United States of America, represented by Howard Rice Nemerovski Canady Falk and Rabkin, United States of America.

Respondent is Domains By Proxy, Inc. for the benefit of AG Distributing, Inc. (collectively "Respondent"). AG Distributing, Inc. is located in Brooklyn, State of New York, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <onecalldeals.com> (the "Domain Name"). The registrar is GoDaddy.com, Inc. (the "Registrar") located in Scottsdale, State of Arizona, United States of America.

3. Procedural History

On June 27, 2009, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email.

On June 29, 2009, 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 Name and that the Domain Name is registered in the Respondent`s name.

On July 6, 2009, after a series of emails, the Center received an Amended Complaint from Complainant. On July 8, 2009, the Center received hardcopy of the Complaint. Complainant paid the required fee.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 July 9, 2009, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2009.

On July 9, 2009, the Center received an email communication from Respondent which the Center deemed to be a Response. The primary point of the email was to suggest a potential settlement, which was transmitted to Complainant.

On August 6, 2009, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Panel"), the Center notified the parties of the appointment of a single-arbitrator panel.

The parties indicated that they might be able to settle this dispute before a decision was rendered. The parties were advised to confirm with the Center whether a settlement had been achieved. The Center was advised of no such settlement and the Panel proceeded with the issuance of this decision.

4. Factual Background

Complainant operates the website at "www.onecall.com" and is one of the largest online retailers of high definition televisions, home theater systems, cameras and electronics accessories. Complainant has been in business since 1908 and it began selling consumer electronics in the 1950`s.

Complainant first began the use of the service mark ONECALL (the "ONECALL Mark") in April 1994 in connection with the launch of its mail-order business. Complainant launched its website using the ONECALL Mark in May 1995.

Complainant has over USD80 million in annual sales to customers throughout the United States and alleges that it has expended substantial amounts of advertising and promotion of its services.

Complainant has a United States Federal trademark registration for the ONECALL Mark (Reg. No. 2,997,383) for use with "Retail and online store services featuring home audio and video equipment".

Respondent registered the Domain Name on March 10, 2009, and is currently using the website to which the Domain Name resolves to offer for sale entertainment furniture and electronics goods, many of which are identical to or competitive with the goods offered by Complainant under its ONECALL Mark.

5. Parties` Contentions

A. Complainant`s contentions

(i) Complainant contends that it has registrations of the ONECALL Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ONECALL Mark.

(ii) Complainant argues that the Domain Name is confusingly similar to the ONECALL Mark, pursuant to paragraph 4(a)(i) of the Policy, because Respondent wholly incorporates the ONECALL Mark the addition of non-distinctive term "deal".

Complainant alleges that the purpose for registering the Domain Name was in an effort to divert persons interested in Complainant`s good and services and to trade unfairly on the goodwill associated with the ONECALL Mark. Complainant further alleges that Respondent`s website to which the Domain Name resolves <onecalldeals.com> copies many of the visual elements at Complainant`s website "www.onecall.com" including a horizontal blue bar and a photograph of a telephone operator.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) of the Policy because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant further contends that the offering of services in a manner calculated to trade on the goodwill of another in not a bona fide use.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) of the Policy because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the ONECALL Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) of the Policy because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant further contends that Respondent has deliberately registered the Domain Name containing the ONECALL Mark to attract the attention of Internet users searching for Complainant`s goods and services in an effort to misleadingly divert consumers and tarnish the ONECALL Mark.

Complainant made three attempts to contact Respondent with written communications. The name of Tony Richards was provided as a contact with an address in North Carolina. Attempts to contact Mr. Richards at the address provided were returned as undeliverable. Nor was any response received to email inquiries.

Ultimately, Mr. Richards contacted Complainant and purported to be the president of OneCallDeals.com. Mr. Richards offered to sell the Domain Name. Complainant alleges that Respondent has registered and is using the Domain Name and the associated website for commercial gain.

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

Pursuant to paragraphs 4(b)(i)-(iv) of the Policy, certain actions will be found to demonstrate that Respondent has registered and used the Domain Name in bad faith. From the facts alleged above, Complainant asserts that Respondent has engaged in actions covered by Policy, paragraph 4(b)(i) (intention to sell the domain name) and paragraph 4(b)(iv) (attracting Internet users with confusion).

Paragraph 4(b)(i) of the Policy covers circumstances indicating that you [Respondent] have registered or you [Respondent] 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 [Respondents] documented out-of-pocket costs directly related to the domain name.

Paragraph 4(b)(iv) of the Policy covers actions which by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [Respondent`s] 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 [Respondent`s] web site or location or of a product.

B. Respondent`s contentions

The email communication which was deemed by the Center to be a response is the only basis for trying to decipher Respondent`s contentions.

(i) Respondent has chosen not to contest Complainant`s contentions that it has enforceable trademark rights.

(ii) Respondent has chosen not to contest Complainant`s contentions that the Domain Name is confusingly similar to the ONECALL Mark.

(iii) Respondent states that it has built a client base, with the implication that it has made a bona fide offering of good and services.

(iv) Respondent states that it had no actual knowledge of Complainant`s ONECALL Mark and should not be found to have registered and 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 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 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.

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.

Even though Respondent has failed to file a formal Response or to contest Complainant`s assertions, the Panel 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 Complainant must prove each of the following:

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

(ii) that 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 registrations of the ONECALL Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ONECALL Mark.

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.

Respondent has failed to come forward with any evidence to refute the allegations of Complainant. Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable rights in the ONECALL Mark.

Identical or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the ONECALL Mark pursuant to the Policy paragraph 4(a)(i), because Respondent wholly incorporates the ONECALL Mark the addition of non-distinctive term "deal".

As numerous courts and prior UDRP 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.

Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the trademark.

The Panel notes that the entirety of the ONECALL Mark is included in the Domain Name.

Therefore, the Panel finds that the Domain Name is confusingly similar to the ONECALL Mark pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, 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 are discussed above.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. 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) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainant has sustained its burden of coming forth with evidence that Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent`s only contention is that it has built a client base, with the implication that it has made a bona fide offering of good and services. The goods and services being offered appear to be competitive with or identical to good and services offered by Complainant. The registration of Complainant`s ONECALL Mark and its long history of using the ONECALL Mark in business have not been contested. The Panel finds that the showing of Respondent is not sufficient to rebut Complainant`s showing.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Registered and Used in Bad Faith

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

Pursuant to paragraphs 4(b)(i)-(iv) of the Policy, certain actions will be found to demonstrate that Respondent has registered and used the Domain Name in bad faith. From the facts alleged above, Complainant asserts that Respondent has engaged in actions covered by Policy, paragraph 4(b)(i) (intention to sell the domain name) and Paragraph 4(b)(iv) (attracting Internet users with a confusion).

Complainant has alleged that Tony Richards as the representative of Respondent offered to sell the Domain Name to Complainant. In addition, Complainant has alleged that Respondent is using the Domain Name to direct Internet users to Respondent`s website which sells products competitive with those offered on Complainant`s website.

Respondent contends that it had no actual knowledge of the ONECALL Mark and should not be found to be in bad faith. Respondent does not contest Complainant`s allegation that Respondent tried to sell Complainant the Domain Name. Nor does Respondent contest Complainant`s allegation that Respondent is engaged in a commercial enterprise, using the Domain Name which has been found above to be confusingly similar.

Therefore, the Panel finds that the weight of the evidence favors Complainant`s contentions and that Complainant has shown the necessary elements of bad faith under the Policy paragraphs 4(b)(i) and (iv).

7. Decision

The Panel concludes (a) that the Domain Name <onecalldeals.com> is confusingly similar to Complainant`s registered ONECALL Mark, (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 Panel orders that the Domain Name be transferred to Complainant.


Richard W. Page
Sole Panelist

Dated: August 26, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-0857.html

 

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