BBY Solutions, Inc. v. Gary Hall
Claim Number: FA1205001443603
Complainant is BBY Solutions, Inc. (“Complainant), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Gary Hall (“Respondent), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <audiovisions.com>, registered with eNom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2012; the National Arbitration Forum received payment on May 11, 2012.
On May 11, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <audiovisions.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 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@audiovisions.com. Also on May 14, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant uses the AUDIOVISIONS mark in connection with audio-video systems, including maintenance, repair, consultation and design of audio, video, lighting, telephone and security systems.
2. Complainant has used the AUDIOVISIONS mark in commerce since as early as 1989, and registered the <avisions.com> domain name in 1996.
3. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its AUDIOVISIONS mark (Reg. No. 2,575,014 filed September 22, 1999).
4. The disputed domain name is confusingly similar to Complainant’s AUDIOVISIONS mark.
5. The disputed domain name resolves to Respondent’s website, where Respondent operates a business which directly competes with Complainant.
6. Respondent is not commonly known by the <audiovisions.com> domain name.
7. Respondent had at least constructive notice of Complainant’s rights in the AUDIOVISIONS mark at the time Respondent registered the <audiovisions.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that uses the AUDIOVISIONS trademark in connection with audio-video systems, including maintenance, repair, consultation and design of audio, video, lighting, telephone and security systems.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its AUDIOVISIONS mark (Reg. No. 2,575,014 filed September 22, 1999).
3. Respondent registered the <audiovisions.com> domain name on May 1, 2000. It resolves to Respondent’s website, where Respondent operates a business which directly competes with Complainant.
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."
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, Complainant contends that its registration of the AUDIOVISIONS mark with the USPTO (Reg. No. 2,575,014 filed September 22, 1999) confers rights in the mark under Policy ¶ 4(a) (i). The Panel concurs, holding that Complainant has successfully established its rights in the mark through its USPTO registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a) (i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AUDIOVISIONS mark. Complainant alleges that Respondent’s <audiovisions.com> domain name is identical to Complainant’s AUDIOVISIONS mark within the meaning of Policy ¶ 4(a) (i). The Panel notes that the disputed domain name differs from the AUDIOVISIONS mark only by the generic top-level domain (“gTLD”) “.com.” The Panel holds that the affixation of a gTLD does not distinguish a disputed domain name under Policy ¶ 4(a) (i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel therefore finds that the disputed domain name is identical to Complainant’s AUDIOVISIONS mark
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AUDIOVISIONS mark and to use it in its domain name;
(b) The disputed domain name resolves to Respondent’s website, where Respondent operates a business which directly competes with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that Respondent is not commonly known by the <audiovisions.com> domain name as envisioned by Policy ¶ 4(c) (ii). The Panel notes that the WHOIS information on record identifies Respondent as “Gary Hall.” The Panel construes the dissimilarity between Respondent’s name and the <audiovisions.com> domain name as evidence that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply). The Panel construes Respondent’s failure to satisfy its burden as further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. 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).
(e) Complainant also contends that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii). Complainant provides evidence that the disputed domain name redirects to the website of Respondent’s business at <synergyave.com>. Complainant further provides evidence that Respondent’s business provides audio-video and security system services in direct competition with Complainant, even operating in the same geographic area as Complainant, as Respondent’s company is based in Palm Desert, CA while one of Complainant’s offices is also located in Palm Desert, CA. The Panel finds that this use of the disputed domain name does 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). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith, because Respondent is deliberately using a domain name that is identical to Complainant’s mark to attract Internet users to its competing business. The Panel draws the inference that Respondent’s use of an identical domain name is meant to create a likelihood of confusion as to Complainant’s affiliation with Respondent’s business, allowing Respondent to benefit wrongfully from Complainant’s reputation and goodwill. The Panel finds Respondent’s operation to exhibit bad faith under Policy ¶ 4(b) (iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Secondly, Complainant asserts that, due to its registration of the AUDIOVISIONS mark with the USPTO, Respondent must have had constructive knowledge of Complainant's rights in the mark when Respondent registered the disputed domain name. UDRP panels have held that constructive knowledge is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <audiovisions.com> domain name in bad faith according to Policy ¶ 4(a) (iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AUDIOVISIONS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <audiovisions.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 11, 2012
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