COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
DECISION
Arrow
Electronics, Inc. v. Vitty, Inc.
Claim Number: FA0301000140637
The
Complainant is Arrow Electronics, Inc., Melville, NY, USA (“Complainant”)
represented by Bradley A. Slutsky, of King & Spalding. The Respondent is Vitty, Inc., Taipei,
TAIWAN (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <arrow.biz>,
registered with 007 Names, Inc.
On
February 14, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James P. Buchele as
Panelist.
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.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”
electronically on January 9, 2003. The
Forum received a hard copy of the Complaint on January 13, 2003.
On
January 15, 2003, 007 Names, Inc. confirmed by e-mail to the Forum that the
domain name <arrow.biz> is registered with 007 Names, Inc. and
that Respondent is the current registrant of the name. 007 Names, Inc. has verified that Respondent
is bound by the 007 Names, Inc. registration agreement and has thereby agreed
to resolve domain name disputes brought by third parties in accordance with the
Restrictions Dispute Resolution Policy (the “RDRP”) and the Uniform Domain Name
Dispute Resolution Policy (the “UDRP”).
On
January 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of Date February 6, 2003. By which Respondent could file a Response to the
Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the
Rules for the Uniform Dispute Resolution Policy as supplemented by the
Supplemental Restrictions Dispute Resolution Policy (the “Rules”).
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.
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 “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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s submission makes the
following assertions:
1. Under the UDRP, Respondent’s <arrow.biz>
domain name is identical to Complainant’s ARROW mark.
2. Under the UDRP, Respondent has no rights
or legitimate interests in <arrow.biz>.
3. Under the UDRP, Respondent registered and
used the <arrow.biz> domain name in bad faith.
4. Under the RDRP, Respondent’s <arrow.biz>
domain name is not being or will not be used primarily for a bona fide
business or commercial purpose.
B. Respondent failed to submit a Response.
Complainant,
Arrow Electronics, Inc., is one of the world’s largest distributors of
electronic components and computer products. Complainant offers its goods and
services through more than 200 sales facilities and 23 distribution centers in
40 countries and territories. Complainant has been doing business in the
electronic components industry for more than 60 years.
Complainant
holds two trademark registrations with the U.S. Patent and Trademark Office
(“USPTO”) and numerous international trademark registrations for the ARROW
mark. More specifically, Complainant holds USPTO Reg. Nos. 1,565,547 registered
on November 14, 1989, and 1,606,728 registered on July 17, 1990. The following
chart illustrates Complainant’s international trademark registrations:
|
JURISDICTION |
REG. NO. |
REG. DATE
|
|
European
Community |
300459 |
January 25,
2001 |
|
Austria |
139.921 |
April 30, 1991 |
|
Benelux
Countries |
490.873 |
November 20,
1990 |
|
Denmark |
VR 00.763 |
January 29,
1993 |
|
Finland |
135.461 |
February 12,
1994 |
|
France |
1.711.457 |
April 9, 1991 |
|
Germany |
2.068.732 |
June 22, 1994 |
|
Greece |
102.536 |
January 24,
1991 |
|
Ireland |
143.796 |
November 21,
1990 |
|
Italy |
602.270;
602.063 |
November 30,
1990 |
|
Portugal |
270.550;
270.551 |
February 3,
1993 |
|
Spain |
1.600.397 |
April 28, 1994 |
|
Sweden |
246.094 |
January 29,
1993 |
|
United Kingdom |
1.448.141 |
November 21,
1990 |
Complainant
has expended significant resources in advertisement and promotion of the ARROW
mark in connection with its products and services offered throughout the world.
Complainant has spent more than $22.5 million the past five years in the United
States alone. Complainant has approximately $10 billion each year in sales of
products and services advertised under the ARROW mark.
Complainant
holds the registrations of the <arrow.com> and <arrowasia.com>
domain names.
Respondent
registered the <arrow.biz> domain name on March 27, 2002 and uses
the disputed domain name to divert Internet users to <vitty.com>, where
Respondent offers electronic and computer components. Complainant’s
investigation of Respondent and Respondent’s products indicates that the
products marketed under the <arrow.biz> domain name “have never
had the mark or symbol of ‘Arrow.’” Instead, Respondent’s products use the name
VITTY.
Complainant’s
examination of Respondent’s activities reveals that Respondent has been
involved in numerous domain name disputes (e.g., Matrix Res. v. Vitty, Inc.,
DBIZ2002-00246 (WIPO Aug. 19, 2002); Dolby Labs. Licensing Corp. v. Vitty,
Inc., DBIZ2002-00248 (WIPO Aug. 14, 2002); and MJM Ent’m, Inc. v. Vitty,
Inc., FA 110853 (Nat. Arb. Forum July 8, 2002)). As found by the panels in
the aforementioned decisions, Respondent has registered over 265 “.biz” domain
names, many of which incorporate third parties’ trademarks.
Paragraph
15(a) of the Rules instructs this Panel to “decide a Complainant 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.”
Paragraph
4(a) of the UDRP 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 the
Complainant has rights;
(2) the 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.
Paragraph
4(b) of the RDRP defines “bona fide business or commercial use” as the bona
fide use or bona fide intent to use the domain name or any content software,
materials, graphics or other information thereon, to permit Internet users to
access one or more host computers through the DNS:
(1) to exchange goods, services, or property
of any kind; or
(2) in the ordinary course of trade or
business; or
(3) to facilitate the exchange of goods,
services, information, or property of any kind or the ordinary course of trade
or business.
The
Panel will first address Complainant’s UDRP arguments.
Complainant
has established rights in the ARROW mark through its registration of the mark
with various international trademark authorities and continuous use of the mark
in commerce for the past 60 years.
Respondent’s
<arrow.biz> domain name is identical to Complainant’s ARROW mark.
Respondent’s second-level domain fails to deviate in any respect from
Complainant’s mark. The addition of a top-level domain (such as “.biz”) is
inconsequential when conducting an analysis under UDRP ¶ 4(a)(i) because a
top-level domain is a required element in a domain name. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top-level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Princeton Linear
Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum
Feb. 8, 2001) (finding that the “.biz” top-level domain in the disputed domain
name is not a factor and hence to be ignored, in determining whether a disputed
domain name is identical to the mark in which Complainant asserts rights).
Accordingly,
UDRP ¶ 4(a)(i) has been satisfied.
Complainant’s submission to the Panel
intimates that Respondent does not have any rights or legitimate interests in
the <arrow.biz> domain name. Because Respondent has failed to
submit a Response, Complainant’s assertions are unopposed and the Panel is
permitted to accept all reasonable inferences contained 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).
Additionally,
because Complainant has provided proof of valid, subsisting rights in a mark
that is identical to the domain name in question and alleged that Respondent
lacks rights or legitimate interests in the domain name the burden shifts to
Respondent. By failing to respond, Respondent has consequently failed to assert
any circumstances that could substantiate its rights or interests in the
subject domain name. 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 name, 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).
As
detailed in the Findings, Respondent is using the disputed domain name to
divert Internet users to its <vitty.com> website, where Respondent sells
various electronic and computer-related goods. Respondent opportunistically
uses Complainant’s ARROW mark to generate interest in its <vitty.com>
domain name and corresponding website. Such commercial use of the domain name
to confuse and divert Internet traffic is not a legitimate use under UDRP ¶¶
4(c)(i) or (iii). See 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); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks its use of the names was not in connection
with the offering of goods or services or any other fair use).
Respondent is making unauthorized use of the <arrow.biz> domain
name, absent any licensing agreement or consent by Complainant. No information
before the Panel suggests that a legitimate connection exists between
Respondent and the infringing domain name. Complainant’s uncontested evidence
indicates that Respondent has not acquired any trademark or service mark rights
in an ARROW mark, or any variation thereof. Moreover, Respondent’s habitual
registration of infringing domain names makes it unlikely that Respondent could
establish rights in <arrow.biz> under UDRP ¶ 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 Great S.
Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>).
Accordingly, the Panel finds that UDRP ¶ 4(a)(ii) has
been satisfied.
Respondent’s bad faith registration
and use is articulated under UDRP ¶ 4(b)(iii).
The Panel finds that UDRP ¶
4(a)(iii) has been satisfied.
Complainant
has established a sufficient prima facie case under the UDRP; therefore,
the Panel concludes that the subject dispute is resolved. Because the UDRP
analysis is dispositive, there is no need to further analyze the case under the
RDRP.
Having
established all three elements required under ICANN Policy and enunciated in
the UDRP, the Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <arrow.biz> domain name be TRANSFERRED from
Respondent to Complainant.
James P. Buchele, Panelist
Dated: February 18, 2003
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