Bell Microproducts Inc. v.
Claim Number: FA0707001040073
Complainant is Bell Microproducts Inc. (“Complainant”), represented by Michael
F. Fleming of Larkin Hoffman Daly & Lindgren Ltd.,
1500 Wells Fargo Plaza, 7900 Xerxes Avenue South, Minneapolis, MN, 55431-1194. Respondent is Nevis Domains (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bellmicroproducts.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 17, 2007; the National Arbitration Forum received a hard copy of the Complaint July 19, 2007.
On July 23, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bellmicroproducts.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <bellmicroproducts.com>, is identical to Complainant’s BELL MICROPRODUCTS mark.
2. Respondent has no rights to or legitimate interests in the <bellmicroproducts.com> domain name.
3. Respondent registered and used the <bellmicroproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bell Microproducts Inc., is a leading value-added distributor of electronic storage products and systems, semiconductors, and a myriad of other computer products and peripherals. Complainant has continuously used the BELL MICROPRODUCTS mark since 1987 in markets throughout the world. Complainant established rights in the BELL MICROPRODUCTS mark through extensive marketing and selling of its computer products; the mark has become well known in the computer industry. Complainant also operates a website located at the <bellmicro.com> domain name.
Respondent registered the <bellmicroproducts.com> domain name February 15, 2004, nearly two decades after Complainant began using the BELL MICRPRODUCTS mark. Respondent’s disputed domain name resolves to a website that prominently displays Complainant’s BELL MICROPRODUCTS mark and features links to third-party websites in direct competition with Complainant.
Respondent has also been the respondent in several previous
UDRP decisions in which the disputed domain names in those cases were
transferred from Respondent to the respective complainants. See Vanguard Group, Inc. v.
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."
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 will draw such inferences as the Panel considers to be 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant is not required to own a trademark registration in order to establish rights in the BELL MICROPRODUCTS mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Panel finds that Complainant established common law rights in the BELL MICROPRODUCTS mark through continuous and extensive use of the mark in connection with its computer products and system services since 1987. Complainant is a leader in the technological community for producing high quality hardware and software and has spent a great deal of effort marketing and promoting its products and services under the mark. Therefore, Complainant’s BELL MICROPRODUCTS mark has acquired secondary meaning sufficient to establish common law rights in the mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Furthermore, Respondent’s <bellmicroproducts.com> domain name is identical to
Complainant’s BELL MICROPRODUCTS mark, as it consists of the mark in its
entirety, merely omitting the space between the two words in the mark. The disputed domain name only differs from
the mark in that it includes the generic top-level domain (“gTLD”) “.com.” However, under the Policy, the addition of a
gTLD to a mark is irrelevant because a top-level domain is a required element
of all domain names. Thus, the Panel
finds that the <bellmicroproducts.com>
domain name is identical to Complainant’s BELL MICROPRODUCTS mark pursuant
to Policy ¶ 4(a)(i).
See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept.
25, 2000) (finding that the domain name <croatiaairlines.com> is
identical to the complainant's CROATIA AIRLINES trademark); see also
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <bellmicroproducts.com> domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving this allegation. However, once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds, in the present case, that Complainant made a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complainant allows the Panel to presume that Respondent lacks rights and legitimate in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nevertheless, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
The disputed domain name, <bellmicroproducts.com>, resolves to a website that prominently displays Complainant’s BELL MICROPRODUCTS mark and contains links to third-party websites in direct competition with Complainant. The Panel presumes that Respondent accrues click-through fees when Internet users click on these links. This does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant further alleges that Respondent is not commonly known by the <bellmicroproducts.com> domain name, another indicator that Respondent cannot show rights and legitimate interests in the disputed domain name. The Panel agrees. Respondent’s WHOIS information does not indicate, and nothing further in the record suggests, that Respondent is commonly known by the disputed domain name. Moreover, Respondent has not been authorized or licensed by Complainant to use the BELL MICROPRODUCTS mark for any purpose. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <bellmicroproducts.com> domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <bellmicroproducts.com> domain name to redirect Internet users to a website featuring links to third-party websites in direct competition with Complainant. Such use constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
As mentioned previously, the Panel presumes that Respondent benefits commercially from the links displayed on the website that resolve from the <bellmicroproducts.com> domain name. Respondent is thus capitalizing on the likelihood that Internet users will be confused as to Complainant’s affiliation with the disputed domain name, which is further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Respondent has also been the respondent in several UDRP
decisions in which the disputed domain names in those cases have been
transferred from Respondent to the respective complainants. See Vanguard Group, Inc. v.
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bellmicroproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 5, 2007.
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