Digi-Key Corporation v. Moshe Zino
Claim Number: FA1305001502438
Complainant is Digi-Key Corporation (“Complainant”), Minnesota, USA. Respondent is Moshe Zino (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digikey4me.com>, registered with GoDaddy.com, LLC.
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 30, 2013; the National Arbitration Forum received payment on May 30, 2013.
On May 31, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <digikey4me.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2013 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@digikey4me.com. Also on May 31, 2013, 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.
Respondent submitted a Response, which was received in a compliant manner on June 2, 2013.
On June 10, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1.Policy ¶ 4(a)(i): Complainant’s DIGI-KEY Rights / Confusing Similarity of Domain Name
(a)Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations for the DIGI-KEY mark, used for the distribution of electronic components (Reg. No. 1,487,965 registered on May 10, 1988).
(b)Respondent’s <digikey4me.com> domain name takes the entire DIGI-KEY mark, adds the “.com,” and the generic phrase “4me” which implies the pronouncement “DIGIKEY for me.”
2. Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests
(a)Respondent is not commonly known as the <digikey4me.com> domain name. The WHOIS information suggests that Respondent is not known by the domain or Complainant’s mark. Respondent is not sponsored by or affiliated with Complainant.
(b)Respondent is using the disputed domain name to resolve to a search engine. This search engine links Internet users to electronic components sold by Complainant’s competitors.
3.Policy ¶4(a)(iii): Respondent’s Bad Faith Use & Registrations
(a)Respondent replied to Complainant’s cease and desist letter by simply stating “hello this domain name is for sale.” Respondent has only held this domain name for 2 years, yet Respondent proclaims “DIGIKEY4ME.COM is for sale Price: 10,000$” A demand for such an amount is in excess of out-of-pocket expenses.
(b)Respondent is using this domain name to obtain commercial revenues through tactics that confuse and disoriented Internet users. Respondent presumably profits from the likelihood that Internet users will be confused, as these search engine results are sponsored advertisements.
(c)Respondent was aware of Complainant’s rights when registering the <digikey4me.com> domain name. Complainant and its DIGI-KEY brand are internationally known in the electronic component distribution business. Respondent’s domain name simply implies that the related websites will provide an Internet user with “DIGIKEY for me.”
B. Respondent
In the Response and in representations made to Complainant and the Forum , Respondent made the following contentions.
1. “From Moshe to Digikey. What is your target price for the domain name digikey4me.com?”
2. “Hello my domain is for sale. i don't understand why ןs illegall;” and
3. “Hello this domain is for sale. Thanks. Moshe.”
1.Complainant is a well known United States company that is one of the largest electronic component distributors in the world.
2.Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations for the DIGI-KEY mark, used for the distribution of electronic components (Reg. No. 1,487,965 registered on May 10, 1988).
3.The <digikey4me.com> domain name was registered on April 12, 2013.The domain name resolves to a search engine that links Internet users to electronic components sold by Complainant’s competitors.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it owns USPTO trademark registrations for the DIGI-KEY mark, used for the distribution of electronic components around the world (Reg. No. 1,487,965 registered on May 10, 1988). Complainant claims it is the largest electronic component distributor in the world. See Complainant’s Exhibit G. The Panel agrees that a USPTO trademark registration is a sufficient showing of Complainant’s Policy ¶4(a)(i) rights, regardless of the country in which Respondent is domiciled. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DIGI-KEY mark. Complainant argues that Respondent’s <digikey4me.com> domain name takes the entire DIGI-KEY mark, adds the “.com,” and the generic phrase “4me” which implies the pronouncement “DIGIKEY for me.” The Panel also notes that the domain name eliminates the mark’s hyphen. The Panel agrees that changes such as deleting a hyphen or adding the generic top-level domain (“gTLD”) “.com” are wholly irrelevant to this analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel further agrees that Respondent’s addition of the numeral “4” and the generic term “me” enhances the confusing similarity between the domain name and the DIGI-KEY mark. See, e.g., Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006) (finding the addition of the term “your” to the WELLS FARGO mark in the <yourwellsfargomortgage.com> domain name to be insufficient to distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Thus the Panel determines that the <digikey4me.com> domain name is confusingly similar to Complainant’s DIGI-KEY mark under Policy ¶ 4(a)(i).
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 DIGI-KEY trademark and to use it in its domain name, adding only the expression “4me” which suggests that the service being offered to the user of the domain name is the service provided by Complainant;
(b) Respondent has then used the disputed domain name for a search engine providing links to electronic components sold by Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also argues that Respondent is not commonly known as the <digikey4me.com> domain name. Complainant suggests that the WHOIS information shows that Respondent is not known by the domain or Complainant’s mark. Complainant further disclaims that Respondent is not sponsored by or affiliated with Complainant. The Panel takes note that the WHOIS information lists “Moshe Zino” as the registrant. The Panel notes that further correspondence from an individual named Moshe Zino suggests that he or she had the authority to sell this domain name. See Complainant’s Exhibit F. The Panel agrees that the record therefore lacks any cognizable basis to find that Respondent is somehow commonly known by the <digikey4me.com> domain name within the meaning of Policy ¶ 4(c)(ii). See 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);
(e) Complainant also alleges that Respondent is using the disputed <digikey4me.com> domain name to resolve to a search engine page. Complainant states that this search engine links Internet users to electronic components sold by Complainant’s competitors. Complainant asserts that the website functions similarly today, albeit with changes to the website to mask Respondent’s prior usage of the marks and logos. The Panel notes that the domain name in question originally resolved to a website that uses Complainant’s own marks and logos in purporting to offer “The World’s LARGEST SELECTION of Electronic Components Available for Immediate Shipment,” with a search bar that asks the Internet user for a part number. See Complainant’s Exhibit C. The Panel notes however that there is no evidence as to where Internet users are redirected after search results are entered into this taskbar. The Panel further notes that the same general use of the domain name is apparently continuing today, without use of Complainant’s logos. See id. In Bank of Am. Corp. v. Nw. Free Cmty. Access, the Panel analyzed the respondent’s rights and interests in a disputed domain name and concluded that “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).” FA 180704 (Nat. Arb. Forum Sept. 30, 2003). Likewise, the Panel agrees that Respondent has not made a Policy ¶ 4(c)(i) bona fide offering in its hosting of a commercial search bar on a disputed domain name that makes excessive use of Complainant’s own marks for Respondent’s commercial ventures—ventures that by their very nature are not Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses.
All of these matters go to make out the prima facie case against Respondent. The only response by Respondent that could be seen as an attempt to present a case to rebut the prima facie case is the interest it has expressed in selling the domain name. That does not rebut the case or show in any way how Respondent has a right or legitimate interest in the domain name.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that 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 states that Respondent replied to Complainant’s cease and desist letter by simply stating “hello this domain name is for sale.” Complainant assesses this comment in light of the fact that Respondent has held this domain name for only 2 years. Complainant also notes that this offer to sale is not for a small amount; indeed Respondent proclaims “DIGIKEY4ME.COM is for sale Price: 10,000$.” Demanding such a sum is in excess of what could be expected to have been out-of-pocket expenses. The Panel notes that the record validates Complainant’s version of events in regards to Respondent’s general offer of sale, and Respondent’s eventual public offer of the domain name for $10,000.00. See Complainant’s Exhibits C, F. The Panel further notes that in Respondent’s official Response in this proceeding, Respondent further requests that Complainant provide it with Complainant’s target price for the domain name. The Panel therefore finds that Respondent has endeavored to sell the domain name for a sum in excess of the costs involved in holding it for two years and that this is evidence of bad faith use and registration under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Secondly, Complainant argues that Respondent is using the disputed domain name to obtain commercial revenues through tactics that would confuse Internet users. Complainant goes further and submits that Respondent presumably profits from the likelihood that Internet users will be confused, as the search engine results are sponsored advertisements that resolve under the banner of Complainant’s own marks and logos. The Panel again notes that until Respondent was served with a cease and desist letter, it made use of Complainant’s actual marks and logos on its website through its use of the <digikey4me.com> domain name. See Complainant’s Exhibit C. The Panel notes the decision in Carey Int’l, Inc. v. Kogan FA 486191 (Nat. Arb. Forum July 29, 2005), where the panel found that the respondent was capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill of the complainant and that consequently the respondent had registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).). Thus the Panel likewise concludes that the use of Complainant’s own marks in the domain name and the website itself is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to deceive and confuse Internet users.
Thirdly, Complainant also argues that Respondent was aware of Complainant’s rights when registering the <digikey4me.com> domain name. Complainant maintains that both Complainant as a company and its DIGI-KEY brand and marks are internationally known in the electronic component distribution business. Complainant explains that Respondent’s domain name simply implies that the related website will provide an Internet user with “DIGIKEY” products “for me”—meaning that Respondent wanted the consumer or Internet user to believe they can get Complainant’s products by using the domain name. Complainant submits that this, combined with Respondent’s usage of Complainant’s actual marks and logos, is compelling evidence that Respondent had actual knowledge of the mark. The Panel therefore finds that Respondent had actual knowledge of Complainant's mark and rights and that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, 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 DIGI-KEY mark and in view of the conduct that Respondent has
engaged in when using the domain name, particularly in using the disputed
domain name for a search engine providing links to electronic components sold
by Complainant’s competitors, 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 <digikey4me.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 13, 2013
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