Fry's Electronics, Inc. v. olubowale timothy / web
Claim Number: FA1904001840347
Complainant is Fry's Electronics, Inc. (“Complainant”), represented by Jeffrey R. Cadwell of Dorsey & Whitney LLP, Minnesota, USA. Respondent is olubowale timothy / web (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fryselectronicsltd.com>, registered with NameCheap, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2019; the Forum received payment on April 24, 2019.
On April 24, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <fryselectronicsltd.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2019 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@fryselectronicsltd.com. Also on April 26, 2019, 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 May 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a leading provider of retail electronics in the United States and online through its <frys.com> e-commerce retail website. Complainant has rights in the FRY’S ELECTRONICS trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,519,902, registered Oct. 21, 2008). Respondent’s <fryselectronicsltd.com> domain name is confusingly similar to Complainant’s FRY’S ELECTRONICS trademark because it merely adds the generic term “ltd” and “.com” the generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <fryselectronicsltd.com> domain name. Respondent is neither commonly known by the disputed domain name, nor has Complainant authorized Respondent to use Complainant’s FRY’S ELECTRONICS trademark. Respondent fails to use the disputed domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant.
Respondent registered and uses the <fryselectronicsltd.com> domain name in bad faith. Respondent has a history of bad faith registrations including a past adverse WIPO decision and another instantaneous Forum case regarding registering a domain name based upon the FRY’S trademark. Furthermore, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name by passing off as Complainant. Respondent also registered the disputed domain name with a privacy service. Finally, Respondent had actual knowledge of Complainant’s rights in the FRY’S ELECTRONICS trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,102,627 FRY’S (word), registered October 7, 1997 for goods and services in classes 9 and 42;
No. 3,519,899 FRY’S (word), registered October 21, 2008 for services in class 35;
No. 3,519,902 FRY’S (Stylized in Red), registered October 21, 2008 for goods and services in classes 9 and 35;
No. 3,515,900 FRY’S ELECTRONICS (Stylized in Red), registered October 21, 2008 for goods and services in classes 9 and 35;
No. 2,031,351 FRY’S ELECTRONICS (Stylized), registered January 21, 1997 for goods and services in classes 9 and 42;
No. 3,519,896 FRY’S ELECTRONICS (Stylized), registered October 21, 2008 for services in class 35; and
No. 3,477,193 FRYS.COM (in Red), registered July 29, 2008 for services in class 35.
Respondent registered the disputed domain name <fryselectronicsltd.com> on January 24, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the FRY’S ELECTRONICS trademark based upon its registration of the trademark with the USPTO (e.g., Reg. No. 3,519,902, registered October 21, 2008). Registration of a trademark with the USPTO is sufficient to establish rights in the trademark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the FRY’S ELECTRONICS trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain name <fryselectronicsltd.com> is confusingly similar to Complainant’s FRY’S ELECTRONICS trademark because it merely adds the generic term “ltd” and the “.com” gTLD. The addition of a generic term and a gTLD is insufficient in distinguishing a disputed domain name from a trademark under Policy ¶ 4(a)(i)). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a trademark under Policy ¶ 4(a)(i)). Furthermore, the Panel notes that an apostrophe is removed, which must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits apostrophes. See Kellogg North America Company v. Richard Harvey / Kellogg Company, FA 1752030 (Forum Nov. 16, 2017) (“The punctuation (an apostrophe) is removed, which must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits apostrophes.”). Thus, the Panel finds that Respondent’s <fryselectronicsltd.com> is confusingly similar to Complainant’s FRY’S ELECTRONICS trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the <fryselectronicsltd.com> domain name because Respondent is neither commonly known by the disputed domain name, nor has Complainant authorized Respondent to use Complainant’s FRY’S ELECTRONICS trademark. A respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the trademark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the relevant WHOIS information indicates that Respondent is known as “Olubowale Timothy”. Thus, the Panel agree that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is neither commonly known by the disputed domain name, nor has Complainant authorized Respondent to use Complainant’s FRY’S ELECTRONICS trademark.
Next, Complainant argues that Respondent lacks rights or legitimate interests in the <fryselectronicsltd.com> domain name as Respondent fails to make a bona fide offering of goods and services or a legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant by using Complainant’s FRY’S ELECTRONICS trademark, a photograph of Complainant’s retail store, and offering competing goods for sale. Complainant provides screenshots of the disputed domain name’s resolving website to support this contention. As the website resolving from the disputed domain name featured the Complainant’s trademark and various photographs related to the Complainant’s business, the Panel finds that the Respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <fryselectronicsltd.com> domain name in bad faith because Respondent has a past history of bad faith registrations including a past adverse WIPO decision. A respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant has provided this Panel a copy of the WHOIS information and screenshot of the disputed domain name’s resolving website. Complainant claims that the current registration of the disputed domain name is part of an ongoing pattern and Respondent was previously ordered to transfer a domain name to a third party. See Interbond Corporation of America d/b/a BrandsMart U.S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Olubowale Timothy, Web, D2018-1462 (WIPO August 25, 2018) (ordering transfer of <brandsmartltd.com> to Complainant owner of the trademark BRANDSMART U.S.A.). Thus, the Panel finds that Respondent’s prior adverse WIPO decision establishes a pattern of bad faith registrations under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent registered and uses the <fryselectronicsltd.com> domain name in bad faith because Respondent attempts to pass off as Complainant that disrupts Complainant’s business for Respondent’s pecuniary gain. Panels have found bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online services in direct competition with the complainant’s business. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant contends that Respondent uses Complainant’s FRY’S ELECTRONICS trademark, shows a photograph of a FRY’s retail store, and offers competing goods for sale. Thus, the Panel agrees that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues that Respondent registered and uses the <fryselectronicsltd.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the FRY’S ELECTRONICS trademark prior to registration of the disputed domain name. Actual knowledge of a complainant’s trademark prior to registering the disputed domain name may well be sufficient to demonstrate bad faith per Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s trademark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). In the present case, as also noted above, Complainant contends Respondent uses a Complainant’s FRY’S ELECTRONICS trademark, a photograph of Complainant’s retail location, and offers competing goods for sale. The Panel therefore agrees with the Complainant that Respondent registered and uses the disputed domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the FRY’S ELECTRONICS trademark
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <fryselectronicsltd.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 30, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page