Avnet Inc. v. dulongzhuan / du longzhuan / 张红丽
Claim Number: FA2202001985612
Complainant is Avnet Inc. (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is dulongzhuan / du longzhuan / 张红丽 (“Respondent”), Philippines.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <avnetda.com>, <avnetz.com>, and <avnetblog.com>, registered with NameSilo, LLC and Domain International Services Limited.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2022; the Forum received payment on February 23, 2022. The Complaint was received in English.
On February 24 & 25, 2022, NameSilo, LLC and Domain International Services Limited confirmed by e-mail to the Forum that the <avnetda.com>, <avnetz.com> and <avnetblog.com> domain names are registered with NameSilo, LLC and Domain International Services Limited and that Respondent is the current registrant of the names. The Registrars have verified that Respondent is bound by their registration agreements 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 3, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 23, 2022 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 postmaster@avnetda.com, postmaster@avnetz.com, postmaster@avnetblog.com. Also on March 3, 2022, the Chinese and English language 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Paragraph 3(c) of 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.” Here, each domain name has a separate holder, but Complainant asserts that the names are effectively controlled by the same person and/or entity operating under several aliases.
In support of that assertion Complainant points out that the domain names “were registered within days of each other and the <avnetda.com> and <avnetz.com> domain names were also registered with the same registrar.” Further, that the domain names resolve to websites with essentially identical content.
The Panel observes that the domain names were registered on May 8 and 12, 2021 and that they resolve to portals with links to adult-oriented material. The resolving sites for the <avnetda.com> and <avnetz.com> domains are identical and the site resolving from <avnetblog.com> is similar to that other site.
The Panel is satisfied on the evidence that the names are controlled by one person or entity which can be treated as “Respondent” under Rule 3(c) for the purposes of this decision.
The Panel notes the Chinese language Registration Agreement in respect of the domain name registered with Domain International Services Limited, namely, <avnetblog.com>. Under Rule 11(a) the language of the proceedings with respect to that domain name is Chinese. Nevertheless, Complainant requests that proceedings continue in the English language.
The Panel has discretion to allow that request and in considering similar requests UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language (see, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006)).
Here, the Complaint states that:
“Complainant has been unable to locate a Registration Agreement in use by Domain International Services Limited. Although the Domain International Services Limited is located in Hong Kong, English is an official language of Hong Kong under the Hong Kong Basic Law, which states in full that ‘In addition to the Chinese language, English may also be used as an official language by the executive authorities, legislature and judiciary of the Hong Kong Special Administrative Region.’”.
That submission does not speak to an individual’s proficiency in English. Moreover, the holder of the domain name gives a registration address in Sichuan, mainland China, not Hong Kong. The submission is unpersuasive.
The Panel is left to make its own assessment and notes that the disputed domain name resolves to a pornographic portal where all the links are written in Chinese. All that might otherwise be observed is that the domain name combines Complainant’s trademark with an English language[i] term, “blog”, but that word is so ubiquitously used on the internet that the Panel can draw no conclusions about a facility in English merely from its inclusion in the domain name.
Based simply on the asserted proficiency in English, the Panel would order that proceedings be recommenced in respect of this domain name.
However, the Panel may otherwise take into whether it would be generally expeditious for proceedings to continue in English bearing in mind the objects of the Policy, which included a desire to provide a quick and cost-efficient mechanism to combat cases of domain name abuse.
Here, there is no explanation why Complainant’s trademark, an invented word with no dictionary meaning, has been adopted. As discussed, all the domain names direct Internet users to pornographic material. Misuse of this kind has plagued trademark owners and has been the subject of countless UDRP decisions. The Panel has already accepted that the disputed domain names are under common control. As such, the evidence is of systematic abuse of Complainant’s trademark rights and shows a pattern of bad faith conduct. In the circumstances, the Panel finds that the proceedings should continue in the English language.
A. Complainant
Complainant asserts trademark rights in AVNET. Complainant holds national registrations for that trademark. Complainant submits that the domain name is identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used for a legitimate purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a distributor of electrical and electronic goods and is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 1,481,121, registered March 15, 1988 for AVNET; and
2. the disputed domain names were registered in May 2021 and resolve to websites promoting adult-related material.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in AVNET since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
The disputed domain names take the trademark to which they add a non-distinctive word or letters, plus the gTLD, “.com”. The Panel finds the domain names to be confusingly similar to the trademark (see, for example, Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) finding that addition of the letters ‘btc’ and the gTLD to the BITTREX mark did not distinguish the domain name from complainant’s mark; TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) finding the addition of a generic term and gTLD insufficient distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you 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 (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 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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The Registrar confirmed the domain name holders to be “dulongzhuan”, “du longzhuan” and “张红丽” which does not indicate that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and there is nothing which might contradict that claim.
As stated, Respondent uses the domains to direct users to adult-oriented content which clearly does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy (see, for example, Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA 1603444 (Forum Mar. 19, 2015) holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that the matter falls under paragraph 4(b)(iv). It has already found the disputed domain names to be confusingly to Complainant’s trademark. In terms of the Policy the only issue is that of “commercial gain” and in that respect the Panel finds it more likely than not that Respondent is profiting from the confusion occasioned by the misuse of Complainant’s trademark - the actual manner is not important. The Panel finds that Respondent has used the domain names intending to attract Internet users to online locations by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of those websites (see, for example, Nasdaq, Inc. v. Domain Administrator / See PrivacyGuardian.org, FA 1919840 (Forum Dec. 9, 2020) (“Complainant has provided a screenshot of the disputed domain name’s resolving webpage which offers adult-oriented materials. This is evidence that Respondent registered and uses the disputed domain name in bad faith …”).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <avnetda.com>, <avnetz.com> and <avnetblog.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 31, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page