CompUSA Management Company v. Sound
Computer Services and Gordy Ebner
Claim Number: FA0302000146229
PARTIES
Complainant
is CompUSA Management Company,
Dallas, TX (“Complainant”) represented by Lee
Ann Wheelis Lockridge, of Thompson & Knight LLP. Respondent is Gordy Ebner Sound Computer Services, Olympia, WA (“Respondent”)
represented by Gordy Ebner, of Sound Computer Services.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <comp-u-s-a.com>,
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Estella
S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 19, 2003; the Forum received a hard copy of the
Complaint on February 21, 2003.
On
February 24, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <comp-u-s-a.com>
is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that the
Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that
Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
February 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 17, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@comp-u-s-a.com by e-mail.
A
timely Response was received and determined to be complete on March 17, 2003.
A
timely Additional Submission was received on March 24, 2003 from Complainant.
On March 26, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Estella S. Gold
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant or its predecessor in
interest has registered numerous trademarks on the Principal Register with the
United States Patent and Trademark Office (“USPTO”), including the COMPUSA
mark, registration number 1,735,429, registered on November 24, 1992,
identifying goods and services as being related to retail store services and
wholesale distributor services in the field of computers, computer products,
and computer accessories. Complainant
shows evidence that it has used and advertised its COMPUSA marks extensively
throughout the world for more than 20 years, and now spends millions of dollars
each year advertising its services and products sold under the COMPUSA mark.
2. Complainant claims that the <comp-u-s-a.com> domain name is
confusingly similar to Complainant’s COMPUSA mark because the disputed domain
name incorporates Complainant’s entire mark and simply adds three hyphens as
punctuation. Complainant asserts that
Respondent has no rights or legitimate interests in the <comp-u-s-a.com> domain name. Complainant alleges that Respondent is attempting to use a
variation of Complainant’s marks to divert Complainant’s customers to
Respondent’s website, in direct competition with Complainant’s sale of computer
products.
3. Complainant asserts that Respondent has
no legitimate interest or rights in the <comp-u-s-a.com>
domain name.
B.
Respondent
1. Respondent contends that the <comp-u-s-a.com> domain name is
not confusingly similar to Complainant’s COMPUSA mark because Respondent has
three hyphens in its domain name that do not appear in Complainant’s mark. Respondent asserts that it is unlikely that
Internet users, in an attempt to locate Complainant’s website, will
accidentally insert three hyphens and be diverted to Respondent’s disputed
domain name, creating initial interest confusion.
2. Respondent submits that its registration
and use of the disputed domain name was not done in bad faith, but, rather, use
of the disputed domain name was part of a larger business plan of Sound
Computer Services. Respondent asserts
that there was no bad faith in the registration of that domain name.
C.
Additional Submissions
The
additional submissions supplied by Complainant and received March 24, 2003,
were considered in reaching this Decision.
FINDINGS
The following facts are undisputed:
(a) Complainant has current registration in
the Principal Register at the USPTO for COMPUSA and numerous variations.
(b) Complainant has used its mark in commerce
for at least twenty years, and spent substantial sums of money in the marketing
of its mark in the field of computer sales and services.
(c) Complainant has not licensed or otherwise
permitted Respondent to use any of its trademarks.
(d) Respondent is not commonly known by the
disputed domain name.
ADDITIONAL FINDINGS
(a) There is a competitive relationship
between Complainant and Respondent, in that they are in similar commercial
endeavors.
(b) Use of hyphens does not adequately
distinguish Respondent’s domain name from Complainant’s registered trademark,
thereby creating a confusing similarity.
(c) Respondent has intentionally attempted to
attract Internet users with its domain name by creating a likelihood of
confusion with Complainant’s mark for Respondent’s commercial gain.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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 the 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.
The <comp-u-s-a.com>
domain name is confusingly similar to Complainant’s COMPUSA mark because the
disputed domain name incorporates the Complainant’s entire mark and simply adds
three hyphens. The addition of hyphens
does not sufficiently distinguish Respondent’s disputed domain name from
Complainant’s mark in order for the domain name to survive a confusing
similarity challenge pursuant to Policy ¶ 4(a)(i). See Columbia Sportswear Co. v. Keeler,
D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different from the trade mark COLUMBIA SPORTSWEAR
COMPANY”); see also CBS Broad.,
Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that
putting a hyphen between words of the Complainant’s mark is identical to and
confusingly similar to Complainant’s mark).
The Complainant alleges that Respondent
is attempting to use a variation of Complainant’s registered mark to divert
Complainant’s customers to Respondent’s website. Respondent’s use of the disputed domain name to divert
Complainant’s customers from accessing Complainant’s website is neither a
bonafide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
also Telstra Corp. v. Nuclear
Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use any
of its trademarks and (ii) the fact that the word TELSTRA appears to be an
invented word, and as such is not one traders would legitimately choose unless seeking
to create an impression of an association with the Complainant, demonstrate
that Respondent lacks rights or legitimate interests in the domain name).
The Panel finds that Respondent’s use
of a confusingly similar domain name to
Complainant’s mark in order to compete with the Complainant is not a bonafide
offering of goods and services pursuant to Policy ¶ 4(c)(iii), nor a
legitimate, non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
The Panel finds that the Respondent is
not commonly known by either COMP-U-S-A or <comp-u-s-a.com>
because “COMP-U-S-A” appears only once on Respondent’s website as the name of a
“division” of Sound Computer Services, and furthermore, does not appear in the
WHOIS information for the domain name. 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); see also 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).
As
a direct competitor with the Complainant, offering sales and service of
computer goods, the Panel finds that Respondent’s registration and use of the
disputed domain name is evidence of bad faith pursuant to Policy ¶
4(b)(iii). See
Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat.
Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant
registered and used a domain name confusingly similar to Complainant’s
PENTHOUSE mark to host a pornographic website). The Panel finds that Respondent is intentionally attempting to
attract Internet users to the <comp-u-s-a.com>
domain name by creating a
likelihood of confusion with Complainant’s mark for Respondent’s commercial
gain, which is evidence of bad faith registration and use pursuant to Policy
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see
also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <comp-u-s-a.com>
domain name be TRANSFERRED from Respondent to Complainant.
Estella S. Gold, Panelist
Dated: April 3, 2003
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page