ABC Distributing, Inc. v. Ling Shun Shing
Claim Number: FA0209000126640
PARTIES
Complainant
is ABC Distributing, Inc., North
Miami, FL, USA (“Complainant”) represented by James R. Davis, of Arent Fox
Kintner Plotkin & Kahn, PLLC.
Respondent is Ling Shun Shing,
Shanghai, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <abcdistribuitng.com>,
<abcdistributingco.com>, <abcdistrivuting.com>,
<abcdisributing.com> and <abcdisturbiting.com>,
registered with Iholdings.com, Inc.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 27, 2002; the Forum received a hard copy of the
Complaint on September 30, 2002.
On
October 15, 2002, Iholdings.com, Inc. confirmed by e-mail to the Forum that the
domain names <abcdistribuitng.com>,
<abcdistributingco.com>, <abcdistrivuting.com>,
<abcdisributing.com> and <abcdisturbiting.com> are
registered with Iholdings.com, Inc. and that Respondent is the current
registrant of the names. Iholdings.com,
Inc. has verified that Respondent is bound by the Iholdings.com, Inc.
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
October 16, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 5, 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@abcdistribuitng.com,
postmaster@abcdistributingco.com, postmaster@abcdistrivuting.com,
postmaster@abcdisributing.com, and postmaster@abcdisturbiting.com by e-mail.
Having
received no formal 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
December 2, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<abcdistribuitng.com>,
<abcdistributingco.com>, <abcdistrivuting.com>,
<abcdisributing.com> and <abcdisturbiting.com> domain
names are confusingly similar to Complainant's ABC DISTRIBUTING mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
Respondent
did not submit a formal Response.
FINDINGS
Complainant has used the ABC DISTRIBUTING
mark since 1955 in relation to its general merchandise catalog and mail order
services. Complainant’s service mark is
registered with the United States Patent and Trademark Office as Registration
Numbers 1,831,704 and 2,460,660.
Complainant has done business through its own domain name
<abcdistributing.com> since 1997 and currently receives over a million
hits each day.
From September 6 through September 19,
2002, Respondent registered the disputed domain names. Respondent has linked the disputed domain
names to various commercial website that sell goods that compete with Complainant’s
business. Respondent has requested, in
its informal Response, that the disputed domain names be transferred to
Complainant.
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 and/or Confusingly Similar
Complainant has established that it has
rights in the ABC DISTRIBUTING mark through its continuous use since 1955 and
its registrations with the United States Patent and Trademark Office.
The disputed domain names are all
confusingly similar to Complainant’s mark because they are all misspellings of
Complainant’s mark. The disputed domain
names <abcdistribuitng.com>,
<abcdistributingco.com>, <abcdistrivuting.com>,
<abcdisributing.com> and <abcdisturbiting.com> all
either omit, transpose, or add a letter equating to common spelling errors of
Internet users. The misspelling of a
mark is not considered to create any distinct characteristics, therefore
Respondent’s domain names have not overcome a Policy ¶ 4(a)(i) confusingly
similar analysis. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); 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 the domain name confusingly similar to Complainant’s
marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to respond,
therefore it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain names. When
Complainant asserts a prima facie case against Respondent, the burden of
proof shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Because Respondent has not submitted a
Response, it is appropriate for the Panel to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (failure to respond allows all reasonable inferences of fact in the
allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Moreover, Respondent has requested that
the disputed domain names be transferred to Complainant. Respondent’s failure to address
Complainant’s allegations and request to transfer the domain names is
considered to be an admission that Respondent has no rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001)
(Respondent’s willingness to transfer the domain name at issue indicates that
it has no rights or legitimate interests in the domain name in question); see
also Colgate-Palmolive Co. v. Domains
For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s
willingness to transfer the domain name at issue to Complainant, as reflected
in its Response, is evidence that it has no rights or legitimate interests in
the domain name).
Respondent is using the disputed domain
names in order to divert Internet users to websites that compete with
Complainant’s business. The use of
confusingly similar domain names in order to confuse and divert Internet
traffic is not considered to be in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Vapor Blast Mfg. Co. v.
R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks).
Furthermore, there is no evidence on
record that Respondent is commonly known by ABC DISTRIBUTING and the Panel only
has evidence that Respondent is known as Ling Shun Shing. As a result, Respondent has failed to
establish that it has rights or legitimate interests in the disputed domain
names 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 Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that Respondent has no rights or legitimate interests in domain
names because it is not commonly known by Complainant’s marks and Respondent
has not used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using the disputed domain
names in order to divert Internet traffic to websites that compete with
Complainant’s business. It can be
inferred that Respondent is making a profit from this diversionary use. The use of confusingly similar domain names
in order to confuse and divert Internet traffic for Respondent’s commercial
gain is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain).
Furthermore, Respondent’s registration of
more than one domain name that is a misspelling of Complainant’s mark in order to
divert Internet users to competing websites results in the disruption of
Complainant’s business and is therefore evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also S. Exposure v.
S. 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 EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15,
2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites).
Respondent, in its informal Response, has
requested that the domain names be transferred to Complainant. This is considered to be an admission that
the domain names were registered and used in bad faith. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001)
(Respondent’s registration and use of the domain name at issue coupled with its
expressed willingness to transfer the name amply satisfies the bad faith
requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum
Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s
allegations coupled with its willingness to transfer the names is evidence of
bad faith registration and use).
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 names <abcdistribuitng.com>, <abcdistributingco.com>,
<abcdistrivuting.com>, <abcdisributing.com> and <abcdisturbiting.com>, be transferred from Respondent
to Complainant.
Tyrus R. Atkinson, Jr. , Panelist
Dated: December 11, 2002
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