Avnet, Inc. v. Gilles,marcel Pomare
Claim Number: FA1611001701899
Complainant is Avnet, Inc. (“Complainant”), represented by Jan Zecher of Fish & Richardson P.C., Germany. Respondent is Gilles,marcel Pomare (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fr-avnet.com>, registered with REGISTER.IT SPA.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016. The Complaint was received in both French and English.
On November 9, 2016, REGISTER.IT SPA confirmed by e-mail to the Forum that the <fr-avnet.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name. REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA 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 November 14, 2016, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of December 5, 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@fr-avnet.com. Also on November 14, 2016, the French language 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 December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Language of the Proceedings
The Registration Agreement is written in French, thereby making the language of the proceedings in French. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the AVNET mark through its registrations with the European Union Intellectual Property Office (“EUIPO”) and the United States Patent and Trademark Office (“USPTO”). Respondent’s <fr-avnet.com> domain name is confusingly similar to the AVNET mark because it contains the mark along with country code for France, “fr,” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <fr-avnet.com> domain name because it is not licensed by Complainant to use the AVNET mark in a domain name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website forwards Internet users to Complainant’s own website.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration of domain names. Respondent registered and uses the <fr-avnet.com> domain name in bad faith because it would be inconceivable for Respondent to use the domain name without creating a false impression of association with Complainant and because the use to forward to Complainant’s own website suggests awareness of Complainant’s rights in the AVNET mark as well as an intent to benefit from such misrepresentation of affiliation.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Avnet, Inc., is one of the world’s largest distributors of electronic components and computing solutions. Complainant has rights in the AVNET mark through registrations with the EUIPO (Reg. No. 003804267, registered on August 23, 2005) and the USPTO (Reg. No. 3,145,418, registered on September 19, 2006) for use with electronic and computer components and equipment. Respondent’s <fr-avnet.com> domain name is confusingly similar to the AVNET mark.
Respondent, Gilles,marcel Pomare, registered the <fr-avnet.com> domain name on March 23, 2016.
Respondent
is not commonly known by the <fr-avnet.com>
domain name. Complainant has
not licensed Respondent to use the AVNET mark. Respondent fails to use the
<fr-avnet.com> domain name to provide a bona fide
offering of goods or services or a legitimate noncommercial or fair use because
the resolving website forwards Internet users to Complainant’s own website.
Respondent registered and uses the <fr-avnet.com> domain name in bad faith under Policy ¶ 4(a)(iii). It would be inconceivable for Respondent to use the domain name without creating a false impression of association with Complainant. And, the forwarding to Complainant’s own website shows Respondent’s actual knowledge of Complainant’s rights in the AVNET mark.
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.”).
Complainant has rights in the AVNET mark under Policy ¶ 4(a)(i) through registrations with the EUIPO and the USPTO. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum April 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of rights in the ASTUTE SOLUTIONS mark.).
Respondent’s <fr-avnet.com> domain name is confusingly similar to the AVNET mark because it contains the mark, country code for France, “fr,” the gTLD “.com,” and a hyphen.
Respondent is not commonly known by the <fr-avnet.com> domain name. Complainant has not licensed Respondent to use the AVNET mark. The WHOIS information for the domain name lists Gilles,marcel Pomare as registrant. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent fails to use the <fr-avnet.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website forwards Internet users to Complainant’s own website. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or
¶ 4(c)(iii) . . .”).
Complainant claims that Respondent has demonstrated a pattern of bad faith registration of domain names under Policy ¶ 4(b)(ii). In support, Complainant provided WHOIS information showing that Respondent owns domain names incorporating the trademarks of various third parties. However, Policy ¶ 4(b)(ii) requires having multiple domain names in dispute between a single complainant and respondent or a history of adverse UDRP decisions against the named respondent. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); see also Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). As such, the Panel finds that Complainant has failed to show that Respondent demonstrated a pattern of registering domain names in bad faith. Therefore, Complainant has not satisfied Policy ¶ 4(b)(ii).
However, the Panel finds that Respondent registered and uses the <fr-avnet.com> domain name in bad faith under Policy ¶ 4(a)(iii), because it would be inconceivable for Respondent to use the domain name without creating a false impression of association with Complainant and because the forwarding to Complainant’s own website shows Respondent’s actual knowledge of Complainant’s rights in the AVNET mark. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fr-avnet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 27, 2016
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