Avnet, Inc. v. Syed Abdul / Digital Graphiks
Claim Number: FA1605001675272
Complainant is Avnet, Inc. (“Complainant”), represented by Jan Zecher of Fish & Richardson P.C., Germany. Respondent is Syed Abdul / Digital Graphiks (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avnetdistribution.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 Forum electronically on May 17, 2016; the Forum received payment on May 17, 2016.
On May 17, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <avnetdistribution.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 Icahn’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2016 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@avnetdistribution.com. Also on May 18, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed as Panelist.
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 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 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.
Complainant uses the AVNET mark in connection with its business of providing electronics in the computer hardware and software industries. Complainant has registered the AVNET mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,237,995, registered Apr. 13, 1999), which establishes rights in the mark. (Attachment 4.) Respondent’s <avnetdistribution.com> domain name is confusingly similar to the AVNET mark as it incorporates the mark in its entirety, while adding the descriptive term “distribution” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <avnetdistribution.com> domain name. Respondent is not commonly known by the disputed domain name. (Attachment 9.) Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <avnetdistribution.com> domain name. Rather, the domain name resolves to an active website selling competing products. (Attachment 10.)
Respondent is using the <avnetdistribution.com> domain name in bad faith. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent’s <avnetdistribution.com> domain name could not be used for any purpose that would not cause confusion to the public as to the source, sponsorship, affiliation or endorsement of the website, which is indicative of Respondent’s opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing electronics in the computer hardware and software industries and is one of the world’s largest distributors of electronic components and computing solutions..
2. Complainant has registered the AVNET mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,237,995, registered April 13, 1999), which establish rights in the mark.
3. The <avnetdistribution.com> domain name was registered on February 22, 2016.
4. The domain name resolves to an active website selling products that compete with those of 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(f), 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 (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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the AVNET mark in connection with its business of providing electronics in the computer hardware and software industries. Complainant submits that it has registered the AVNET mark with multiple trademark agencies including the USPTO (e.g., Reg. No. 2,237,995, registered Apr. 13, 1999), and argues that its demonstration of a USPTO trademark registration is sufficient in establishing rights in the mark per Policy ¶ 4(a)(i). (Attachment 4.) Panels have found that a complainant’s USPTO trademark registration is sufficient in establishing rights in the mark per Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the AVNET mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AVNET mark. Complainant argues that Respondent’s <avnetdistribution.com> domain name is confusingly similar to the AVNET mark as it incorporates the mark in its entirety, while adding the descriptive term “distribution” and the “.com” gTLD. Panels have found that such alterations of this sort to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that Respondent’s <avnetdistribution.com> domain name is confusingly similar to the AVNET 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 (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 (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 AVNET mark and to
use it in its domain name, adding only the word “distribution” which encourages internet users to assume that the domain name relates to the distribution activities of Complainant;
(b) Respondent registered the disputed domain name on February 22, 2016;
(c) the domain name resolves to an active website selling competing products;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <avnetdistribution.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes Complainant’s Attachment 9, the WHOIS information regarding the disputed domain name, listing “Syed Abdul / Digital Graphiks” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name);
(f), Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <avnetdistribution.com> domain name. Rather, Complainant contends that the domain name resolves to a website offering computer hardware, in addition to storage services, and IT-related consultancy, support and maintenance services. (Attachment 10 (“Welcome to Avnet Distribution” “Services” : “Consultancy” “Vulnerability assessment” and “Penetration Testing”).) Panels have found that such competitive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Therefore, the Panel finds that Respondent’s <avnetdistribution.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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 contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel again notes that Complainant argues that the domain name resolves to an active website offering computer hardware, along with storage services, and IT related consultancy, support and maintenance services. (Attachment 10.) According to Complainant, these links directly compete with Complainant’s business. As the Panel agrees with Complainant that Internet user confusion subsequently results from the aforementioned website, and that Respondent may profit from it, it finds that Respondent’s behavior constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Secondly, Complainant argues that it is inconceivable that Respondent could make any use of the <avnetdistribution.com> domain name without creating a false impression of association with the Complainant and that this constitutes bad faith under Policy ¶ 4(a)(iii). Panels have found evidence of opportunistic bad faith when every use of a domain name would inevitably create a confusion of the public. See State Farm Mutual Automobile Insurance Company v. Darrin Bagnuolo , FA 399349 (Forum Feb. 21, 2005) (finding bad faith in an unused domain when it was inconceivable that respondent could make any use of the disputed domain name without creating a false impression of association with complainant); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, 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 AVNET mark and in view of the conduct that Respondent engaged in when using the <avnetdistribution.com> domain name, Respondent registered and used it 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 <avnetdistribution.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 14, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page