Digi-Key Corporation v. Sproose North
Claim Number: FA1105001390194
Complainant is Digi-Key Corporation (“Complainant”), represented by Alias Encore, Inc., California, USA. Respondent is Sproose North (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digi-key-corporation.com>, registered with Godaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2011; the National Arbitration Forum received payment on May 23, 2011.
On May 25, 2011, Godaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <digi-key-corporation.com> domain name is registered with Godaddy.com, Inc and that Respondent is the current registrant of the name. Godaddy.com, Inc has verified that Respondent is bound by the Godaddy.com, Inc 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 June 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@digi-key-corporation.com. Also on June 1, 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 24, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <digi-key-corporation.com> domain name is confusingly similar to Complainant’s DIGI-KEY mark.
2. Respondent does not have any rights or legitimate interests in the <digi-key-corporation.com> domain name.
3. Respondent registered and used the <digi-key-corporation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Digi-Key Corporation, owns the DIGI-KEY mark which it uses in connection with its electronic component distribution services. Complainant owns multiple trademark registrations for its DIGI-KEY mark, including those with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,487,965 issued May 10, 1988).
Respondent, Sproose North, registered the disputed domain name on February 15, 2011. The disputed domain name resolves to a website featuring links to Complainant’s competitors’ websites.
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 contends that it has established rights in the DIGI-KEY mark as a result of the numerous trademark registrations it owns. It is well-established that registration of a mark with a federal trademark authority is sufficient to establish rights in a mark, and that the registration need not be in the country a respondent operates or resides. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant has provided evidence of trademark registrations with the USPTO for its DIGI-KEY mark (e.g., Reg. No. 1,487,965 issued May 10, 1988). The Panel holds that Complainant has established rights in the DIGI-KEY mark under Policy ¶ 4(a)(i).
Complainant alleges that the <digi-key-corporation.com> domain name is confusingly similar to its DIGI-KEY mark. Respondent’s addition of a generic term does not adequately distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of a hyphen also fails to distinguish a domain name from a mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)”). Finally, the addition of the generic top-level domain (“gTLD”) to the fully-incorporated mark in the domain name fails to distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark”). The only changes that Respondent made to the fully-incorporated mark was to add the generic term “corporation,” a hyphen, and a gTLD. The Panel thus finds that the <digi-key-corporation.com> is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant claims Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of these allegations. Once a complainant has made a prima facie case, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names”). While the Panel may assume that Respondent lacks rights and legitimate interests in the <digi-key-corporation.com> domain name as a result of Respondent’s failure to respond to the Complaint, the Panel will review the record to determine if Respondent has rights or legitimate interests in the disputed domain name. See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. It is well-established that a review of a respondent’s WHOIS information often determines whether respondent is commonly known by a disputed domain name. See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent’s WHOIS information in no way suggests that it is commonly known by the disputed domain name. Furthermore, Respondent is in no way affiliated with Complainant, and has not received permission to use the DIGI-KEY mark in any way. As such, the Panel finds that Respondent is not commonly known by the <digi-key-corporation.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Previous panels have found that the use of a domain name for a respondent’s benefit that intentionally diverts Internet users from a complainant’s domain name is in violation of both Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). The disputed domain name’s resolving website provides Internet users with links to Complainant’s competitors. Presumably, Respondent receives compensation for those that use these links. Respondent’s domain name is confusingly similar to Complainant’s DIGI-KEY mark in order to divert Internet users to its own website when their intent is to reach Complainant’s. The higher volume of visitors at the disputed domain page increases the benefit to Respondent. The Panel thus finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii)).
Respondent offered to sell the disputed domain name to Complainant for $8,000. Panels previously have found that a respondent’s offer to sell a domain name to a complainant for an amount far-exceeding its out-of-pocket fees demonstrated that the respondent did not have rights or legitimate interests in the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests”). Presumably, the $8,000 offer to Complainant by Respondent covered far more than those costs that Respondent incurred to acquire the domain name. The Panel therefore finds that Respondent demonstrated its lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) by offering to sell it to Complainant for an exorbitant amount.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s offer to sell Complainant the disputed domain name for $8,000 is evidence of Policy ¶ 4(b)(i) bad faith registration and use. Prior panels have repeatedly found that offers to sell a disputed domain name to a complainant for costs exceeding out-of-pocket costs as evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). The Panel finds that Respondent’s offer to sell Complainant the disputed domain name for an amount vastly exceeding Respondent’s out-of-pocket costs to be evidence that Respondent registered and used the disputed domain name in bad faith as outlined in Policy ¶ 4(b)(i).
Respondent’s domain name features links to Complainant’s competitors’ websites. Past panels have found that this is evidence of bad faith registration and use of a domain name because it intentionally disrupts Complainant’s business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv)”); 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). Because Complainant is in direct competition with those third-parties that Respondent features links to through the <digi-key-corporation.com> domain name, Respondent’s use of a confusingly similar domain name to disrupt Complainant’s business demonstrates bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Respondent presumably receives compensation for featuring links on the disputed domain name. The use of a confusingly similar domain name to provide Internet users with links to the competitors of a complainant when it benefits the respondent has been found to be further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds that Respondent’s use of a confusingly similar domain name to generate a profit by featuring links to Complainant’s competitors demonstrates Respondent’s bad faith registration and use of the <digi-key-corporation.com> domain name pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <digi-key-corporation.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 24, 2011
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