Fry's Electronics, Inc. v. Olubowale Timothy
Claim Number: FA1904001840350
Complainant is Fry's Electronics, Inc. ("Complainant"), represented by Jeffrey R. Cadwell of Dorsey & Whitney LLP, California, USA. Respondent is Olubowale Timothy ("Respondent"), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fryselectronicsstore.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.
David E. Sorkin 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 email to the Forum that the <fryselectronicsstore.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 email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@fryselectronicsstore.com. Also on April 26, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 David E. Sorkin 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 electronics retailer with an e-commerce website and retail stores located throughout the United States. Complainant has used the trademarks FRY'S and FRY'S ELECTRONICS in connection with this business for over 30 years, and owns registrations for these and related marks in the United States and other jurisdictions.
Respondent registered the disputed domain name <fryselectronicsstore.com> via a privacy registration service in November 2018; the privacy shield was lifted upon the filing of the Complaint in this proceeding. Respondent is not a licensee or subsidiary of Complainant and has never been authorized to use Complainant's marks; Complainant asserts that Respondent is not commonly known by the disputed domain name. The domain name is being used for a website entitled "Fry's Electronics Store" that offers consumer electronics and similar goods for sale. The website displays images of one of Complainant's retail stores, and lists a street address in Fishers, Indiana, that is the address of one of Complainant's stores. Complainant notes that Respondent has been found in at least one previous proceeding under the Policy to have registered and used a domain name in bad faith. See Interbond Corp. of America d/b/a BrandsMart U.S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Olubowale Timothy, Web, D2018-1462 (WIPO Aug. 25, 2018) (ordering transfer of <brandsmartltd.com>).
Complainant contends on the above grounds that the disputed domain name <fryselectronicsstore.com> is confusingly similar to its FRY'S ELECTRONICS and FRY'S marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <fryselectronicsstore.com> incorporates Complainant's registered FRY'S and FRY'S ELECTRONICS trademarks, omitting the apostrophe and adding "electronics" in one instance, and adding the generic term "store" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Fry's Electronics Inc. v. Haclav Vavel, Chen Fang Fang, D2009-0677 (WIPO Aug. 5, 2009) (finding <fryelectronics.com> confusingly similar to FRY'S and FRY'S ELECTRONICS); Fry's Electronics, Inc. v. Devin Lem, D2008-1583 (WIPO Dec. 24, 2008) (finding <frys-electronics-store.net> confusingly similar to FRY'S and FRY'S ELECTRONICS). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to impersonate Complainant and offer products competitive with those offered by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Deutsche Telekom AG v. James Smith, FA 1766753 (Forum Feb. 14, 2018) (finding no rights or interests where domain name incorporating complainant's mark was used to offer competing products in a manner likely to cause confusion with complainant); Interbond Corp. of America d/b/a BrandsMart U.S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Olubowale Timothy, Web, supra (finding no rights or interests where domain name incorporating complainant's mark was used for website with similar appearance and selling similar goods).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name obviously intended to create confusion with Complainant, and is using the domain name for a website that seeks to pass off as Complainant, promoting products similar to or competitive with those offered by Complainant. Such conduct is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Deutsche Telekom AG v. James Smith, supra (finding bad faith registration and use in similar circumstances); Interbond Corp. of America d/b/a BrandsMart U.S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Olubowale Timothy, Web, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fryselectronicsstore.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 23, 2019
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