Avnet, Inc. v. Milen Radumilo
Claim Number: FA2110001970669
Complainant is Avnet, Inc. (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avnetsolution.com>, registered with Dynadot, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2021; the Forum received payment on October 26, 2021.
On October 26, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <avnetsolution.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2021 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@avnetsolution.com. Also on November 1, 2021, 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 November 26, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Avnet, Inc., is a distributor of electronic components. Complainant has rights in the AVNET mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,481,121, registered Mar. 15, 1988). The <avnetsolution.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic word “solution” and the “.com” generic top-level domain (“gTLD”) to form the disputed domain name. Respondent does not have rights or legitimate interests in the <avnetsolution.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s AVNET mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain redirects to a variety of webpages, including parked pages featuring hyperlinks and websites that distribute malware.
Respondent registered and uses the <avnetsolution.com> domain name in bad faith because Respondent uses the disputed domain name to attract users for commercial gain by redirecting users seeking Complainant to a variety of websites. Additionally, Respondent’s use of the disputed domain name to redirect users to a rotation of third-party websites is itself indicative of bad faith. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the AVNET mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <avnetsolution.com> domain name.
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 asserts rights in the AVNET mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO for the AVNET mark (e.g., 1,481,121, registered Mar. 15, 1988). The Panel finds that Complainant has rights in the AVNET mark under Policy ¶ 4(a)(i).
Complainant claims that the <avnetsolution.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added a generic word and the “.com” gTLD. Adding a generic term and a gTLD to a mark generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Respondent has incorporated the entire mark and added the .com gTLD as well as the generic word “solution.” The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”). The Panel finds that Complainant has made a prima facie case.
Complainant claims that Respondent does not have rights or legitimate interests in the <avnetsolution.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s AVNET mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). There is no evidence available in the WHOIS information to suggest that Respondent is known by <avnetsolution.com> and no information suggests Complainant authorized Respondent to use the AVNET mark. The registrant of the domain is listed as “Milen Radumilo.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <avnetsolution.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to redirect users to a variety of third-party websites, including parked pages with hyperlinks and websites that distribute malware, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (“Using a disputed domain name to operate an FFDNS scheme and distribute malicious software or phish for users’ information is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).”); see also MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Complainant provides screenshots showing the disputed domain name at times redirected users to parked webpages with competing hyperlinks and at other times redirected users to a website that prompts users to download malware. The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interest in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <avnetsolution.com> domain in bad faith because it registered the domain to attract users for commercial gain. Registration and use of a disputed domain name which is essentially identical to a complainant’s domain name and mark, and using that domain name to redirect users to competing pay-per-click hyperlinks is evidence of bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Complainant provides screenshots that the disputed domain name redirects to competing pay-per-click hyperlinks and claims Respondent is benefiting from them financially. This is evidence that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s use of the disputed domain name to redirect users to a rotation of third-party websites is itself indicative of bad faith. Use of a disputed domain name to redirect users to a rotating series of websites, including malware site, indicates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See United States Postal Service v. Dursun BAYRAK, FA 1788459 (Forum June 24, 2018) (“Respondent uses the at-issue domain name to reference various third party websites designed to distribute malware and perpetrate phishing schemes. For instance, on arrival at one of these websites visitors are presented with a notifications pretending to be from tech support that indicates that there are issues with the visitor’s PC that requires a payment to be fixed. Another pop-up window declares that ‘your computer has alerted us that it has been infected with a trojan and spyware’ and that personal information has been stolen. Fraudulent tech support services are offered to fix the contrived problems. Respondent’s use of the domain name is thus disruptive to Complainant’s business and indicates Respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv), and otherwise.”). Complainant provides evidence that the disputed domain name resolves to a variety of website, including one which prompts users to download malware. The Panel finds this is evidence of bad faith.
Complainant also alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the AVNET mark prior to registration of the disputed domain name because of Complainant’s widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, actual notice of Complainant's mark will support a finding that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); See also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant notes that it registered the AVNET mark with the USPTO decades before Respondent registered its disputed domain name and that its use of the mark has been widespread. Given this longevity and fame, Complainant argues that Respondent had actual knowledge of its rights in the AVNET mark. The Panel finds, from the fame of the mark and use made of the domain name, that Respondent had actual knowledge of Complainant’s rights in the AVNET mark and registered and uses the domain name in of bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <avnetsolution.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
December 3, 2021
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