Advanced
Book Exchange Inc. v. Media Track, Inc. aka Vine Ent.
Claim
Number: FA0202000104628
PARTIES
Complainant is Advanced Book Exchange Inc.,
Vancouver, BC (“Complainant”), of Advanced Book Exchange Inc. Respondent is Media Track, Inc. aka Vine Ent., Cypress, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <abebook.com>,
registered with iHoldings, d/b/a
DotRegistrar.
PANEL
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.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
13, 2002; the Forum received a hard copy of the Complaint on February 15, 2002.
On February 15, 2002, iHoldings,
d/b/a DotRegistrar confirmed by e-mail to the Forum that the domain name <abebook.com> is registered with iHoldings,
d/b/a DotRegistrar and that Respondent is the current registrant of the
name. iHoldings, d/b/a DotRegistrar has
verified that Respondent is bound by the iHoldings, d/b/a DotRegistrar
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On February 27, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 27, 2002 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 postmaster@abebook.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On March 25, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
makes the following allegations in this proceeding:
The <abebook.com>
domain name is confusingly similar to Complainant's ABEBOOKS.COM mark. Respondent has no rights or legitimate
interests in the disputed domain name.
Respondent registered
and used the disputed domain name in bad faith.
B. Respondent did not file a Response in this proceeding.
FINDINGS
Complainant
has used the ABEBOOKS.COM mark since 1995 in relation to its Internet book and
software business. Complainant has
filed applications for registration of the ABEBOOKS.COM mark with the United
States Patent and Trademark Office.
Complainant is an internationally known leader in the world book
market. Complainant’s website
<abebooks.com> lists over 30 million books and receives an average of
1.58 million hits per day. Complainant
has offices in Canada and Germany and works with over 6,500 independent
booksellers in the United States alone. Complainant also does business with
booksellers in Canada, England, Germany, France, Australia, and Nepal.
Respondent
registered the disputed domain name on January 15, 1998 and, for some
time, used <abebook.com>
in relation to a website directory of books and booksellers. Complainant asked Respondent to stop using
the domain name and transfer it to Complainant on two occasions. Respondent has never responded to these
requests. At the time the Complaint was
submitted, Respondent was using the disputed domain name in relation to a
commercial directory of various goods and services, including books. When a user attempted to leave Respondent’s
website, pop-up advertisements appeared.
DISCUSSION
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 the 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.
Paragraph 4(a) of the
Policy requires that the 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.
Identical
to and/or Confusingly Similar
Complainant,
through continuous use of ABEBOOKS.COM since 1995, has established that it has
common law rights in the mark. See MatchNet PLC. V. MAC Trading, D2000-0205
(WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050
(WIPO Mar. 23, 2000)) (noting that the UDRP “does not distinguish between
registered and unregistered trademarks and service marks in the context of
abusive registration of domain names” and applying the UDRP to “unregistered
trademarks and service marks”).
Respondent’s
<abebook.com> domain name is confusingly similar to Complainant’s
mark because it merely deletes the “s” at the end of the ABEBOOKS portion of
Complainant’s mark. The omission of a
letter, such as “s,” from the end of a recognized mark is not enough to create
a distinct mark capable of overcoming a claim of confusing similarity. See Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders it
confusingly similar to Complainant’s marks).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not file a Response in this proceeding and therefore it is presumed that
Respondent has no rights or legitimate interests in the disputed domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all inferences
in favor of Complainant. See 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”).
Respondent is using the disputed domain name for a
directory of links to various goods and services including booksellers other
than Complainant. Therefore, Respondent
is using a confusingly similar domain name to provide services that compete
with Complainant’s business. The use of
a confusingly similar domain name to offer services that compete with
Complainant’s goods is not a bona fide offering of goods or services pursuant
to Policy ¶ 4 (c)(i). See The Chip Merchant, Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that
Respondent’s use of the disputed domain names is confusingly similar to
Complainant’s mark. Respondent’s use of
the domain names to sell competing goods was an illegitimate use and not a bona
fide offering of goods).
Respondent,
known as Media Track, is not commonly known as ABEBOOK and therefore cannot be
commonly known by <abebook.com> pursuant to Policy ¶
4(c)(ii). See
Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name and is not using the domain name in
connection with a legitimate or fair use).
Respondent
is not using the disputed domain name for a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii) because Respondent is using a misspelling of
Complainant’s ABEBOOKS.COM mark as a domain name to direct Internet users to a
website that is not connected with Complainant. See Encyclopaedia Brittanica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark); see also AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding that use of the domain name to direct users to other,
unconnected websites does not constitute a legitimate interest in the domain
name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent
registered and used the domain name in bad faith. Respondent is using a confusingly similar domain name in order to
attract Complainant’s customers to Respondent’s website for Respondent’s
commercial gain. This behavior is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s good will and attract Internet
users to Respondent’s website); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where Respondent used an intriguing
domain name to attract users to a website sponsored by Respondent).
Furthermore, Respondent is using a confusingly similar
domain name to offer services that compete with Complainant’s services because
Respondent’s website at the disputed domain name offers links to booksellers
that compete with Complainant. This
activity disrupts Complainant’s business and therefore is evidence of bad faith
pursuant to Policy ¶ 4(b)(iii). See Southern Exposure
v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding Respondent acted in bad faith by attracting Internet users to a
website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the Complainant's marks suggests that the
Respondent, the Complainant’s competitor, registered the names primarily for
the purpose of disrupting the Complainant's business).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly,
it is Ordered that the domain name <abebook.com> be transferred
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated:
April 1, 2002.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page