Sector Supply LC v. Dynamix-Solutons
Claim Number: FA1108001405270
Complainant is Sector Supply LC (“Complainant”), represented by Shiloh A. Coleman, Texas, USA. Respondent is Dynamix-Solutons (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sectorssupply.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2011; the National Arbitration Forum received payment on August 31, 2011.
On August 30, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sectorssupply.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 September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@sectorssupply.com. Also on September 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 September 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <sectorssupply.com> domain name is confusingly similar to Complainant’s SECTOR SUPPLY mark.
2. Respondent does not have any rights or legitimate interests in the <sectorssupply.com> domain name.
3. Respondent registered and used the <sectorssupply.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sector Supply, Inc., is a large purveyor of electrical components, as well as network hardware, and other electrical devices. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SECTOR SUPPLY mark (Reg. No. 3,017,340 registered November 22, 2005). Complainant uses the SECTOR SUPPLY mark to promote and sell its goods in both the U.S. domestic market and abroad through its <sectorsupply.com> website.
Respondent, Dynamix-Solutons, registered the disputed domain name on July 1, 2011. Respondent is sending e-mails to Complainant’s customers pretending to be a legitimate employee of Complainant by using the disputed domain name as its e-mail domain. The disputed domain name itself resolves to an inactive website.
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.
Under Policy ¶ 4(a)(i), Complainant must prove two things. First, Complainant must prove that it has rights in the SECTOR SUPPLY mark to assert its rights in said mark. Second, Complainant must prove that Respondent’s <sectorssupply.com> domain name is confusingly similar to its mark.
First, Complainant contends that it has satisfied the rights requirement in Policy ¶ 4(a)(i) by registering the SECTOR SUPPLY mark with the USPTO (Reg. No. 3,017,340 registered November 22, 2005). Previous panels have concluded that registering a mark with the USPTO affirmatively establishes rights in the registered mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel determines that Complainant has established its rights in the SECTOR SUPPLY mark under Policy ¶ 4(a)(i) by registering it with the USPTO.
Second, Complainant also contends that Respondent’s <sectorssupply.com> domain name is confusingly similar to its SECTOR SUPPLY mark. The disputed domain name includes the entire mark and merely removes a space between the terms of the mark while adding the letter “s,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of the changes made, when viewed in the aggregate, differentiate the disputed domain name from Complainant’s SECTOR SUPPLY mark. The distinctive characteristics of Complainant’s mark remain in the disputed domain name. Therefore, Respondent’s <sectorssupply.com> domain name is confusingly similar to Complainant’s SECTOR SUPPLY mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also 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).”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a sufficient prima facie case against Respondent to shift the burden of proving rights and legitimate interests in the disputed domain name to Respondent. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Respondent has failed to offer a Response in this matter which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). No such assumptions will be made by the Panel, instead the record will be examined in its entirety and a determination on Respondent’s rights or legitimate interests will be made based upon the record and in accordance with the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Dynamix Solutons,” which Complainant alleges supports its contentions. No evidence on the record suggests or alludes to Respondent being commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to an inactive website. However, Respondent is using the disputed domain name as its e-mail domain name for solicitations. Respondent is sending emails out to Complainant’s customers pretending to be Complainant, in an attempt to procure customer information and gain orders that it does not intend to fill. The Panel finds that this fraudulent use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name) see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(iii), Complainant bears the burden of proving that the disputed domain name was registered and used in bad faith. Although Policy ¶ 4(b) offers examples of conduct that may constitute bad faith, it is not all-encompassing and bad faith may be proving by the totality of the circumstances rather than one of those examples. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant contends that Respondent is engaging in fraudulent activity indicating bad faith registration and use on the part of Respondent. The disputed domain name currently resolves to an inactive website; however, Respondent is using it for far more than that. Respondent is sending e-mails to Complainant’s customers soliciting orders using the disputed domain name as its e-mail domain name. Respondent includes the actual name of one of Complainant’s employees in the e-mail, as well as Complainant’s domain name, through which it does much of its business. Respondent is using this e-mail scheme to pass itself off as Complainant and fraudulently obtain customer information. The Panel finds that this use strongly suggests that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
As mentioned above, the disputed domain name actually resolves to an inactive website. Although Complainant fails to allege any bad faith based upon this use, the Panel finds that resolving the disputed domain name to an inactive website, even though it is not Respondent’s primary purpose for registering the disputed domain name, is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
The Panel finds that Complainant has established 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 <sectorssupply.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 27, 2011
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