Gregg Appliances, Inc. v. Manila Industries, Inc. / Domain Admin
Claim Number: FA1105001386772
Complainant is Gregg Appliances, Inc. (“Complainant”), represented by Nikita S. Williams of Ice Miller LLP, Indiana, USA. Respondent is Manila Industries, Inc. / Domain Admin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hhrgregg.com>, registered with Web Commerce Communications Limited d/b/a webnic.cc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2011; the National Arbitration Forum received payment on May 3, 2011.
On May 3, 2011, Web Commerce Communications Limited d/b/a webnic.cc confirmed by e-mail to the National Arbitration Forum that the <hhrgregg.com> domain name is registered with Web Commerce Communications Limited d/b/a webnic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited d/b/a webnic.cc has verified that Respondent is bound by the Web Commerce Communications Limited d/b/a webnic.cc registration agreement 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 May 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2011 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@hhrgregg.com. Also on May 5, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 1, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. Respondent’s <hhrgregg.com> domain name is confusingly similar to Complainant’s HHGREGG.COM mark.
2. Respondent does not have any rights or legitimate interests in the <hhrgregg.com> domain name.
3. Respondent registered and used the <hhrgregg.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gregg Appliances, Inc., is a home appliance and electronics retailer. Complainant owns multiple trademark registrations for a family of marks including the HHGREGG.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,557,080 issued April 2, 2002). Complainant uses the mark to market and sell its home appliance products.
Respondent, Manila Industries, Inc. / Domain Admin, registered the disputed domain name on June 3, 2005. The disputed domain name resolves to a site offering links to Complainant’s competitors in the home appliance and electronics field. Respondent presumably collects click-through fees from the linked sites.
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 draw such inferences it considers 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 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.
Complainant asserts it has established rights in the HHGREGG.COM mark by registering that mark with the USPTO. Complainant has provided affirmative evidence of the legitimate registration of the mark. Registering a mark with the USPTO does establish the registrant’s affirmative rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Thus, the Panel finds that Complainant has established its rights in the HHGREGG.COM mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO (Reg. No. 2,557,080 issued April 2, 2002).
Complainant also asserts that Respondent’s disputed domain name is confusingly similar to its own HHGREGG.COM mark. Respondent’s <hhrgregg.com> domain name includes the entire mark along with a single additional letter, “r,” inserted into the middle of the mark. The Panel finds that the addition of a single letter does not sufficiently differentiate the disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its initial prima facie burden making a showing that Respondent lacks rights or legitimate interests in the disputed domain name. Because of Complainant’s prima facie showing that burden now lies on Respondent to prove its rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has not filed a response in this matter which allows the Panel to assume its lacks rights or legitimate interests in the disputed domain name. See American 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.”). However, the Panel will still examine the entire record to make a determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <hhrgregg.com> domain name. Respondent has offered no evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Manila Industries, Inc. / Domain Admin.” The Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <hhrgregg.com> domain name resolves to a website offering links to Complainant competitors in the home appliance and electronics market. The Panel finds that offering links to Complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s domain name causes disruption in Complainant’s business constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors. Internet users may get diverted to the linked sites and then purchase goods from one of those companies rather than from Complainant. The Panel finds that Respondent is disrupting Complainant’s business through the use of the disputed domain name which provides affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Airlines, Inc. v. Texas Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent is using the confusingly similar domain name for its own commercial gain constituting bad faith registration and use. Respondent’s <hhrgregg.com> domain name resolves to a site offering links to Complainant’s competitors in the home appliance and electronics business. Respondent presumably collects click through fees from these linked sites for each diverted Internet user. Therefore, the Panel finds that Respondent is using the confusingly similar domain name for its own commercial gain constituting bad faith registration and use under Policy ¶ 4(b)(iv). See University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hhrgregg.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 7, 2011
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