Avnet Inc. v. cai shanshan
Claim Number: FA2305002046968
Complainant is Avnet Inc. (“Complainant”), represented by Julie Bolliger of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is cai shanshan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avnetmemec-silica.com>, registered with Gname 028 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 31, 2023; Forum received payment on May 31, 2023.
On June 2, 2023, Gname 028 Inc confirmed by e-mail to Forum that the <avnetmemec-silica.com> domain name is registered with Gname 028 Inc and that Respondent is the current registrant of the name. Gname 028 Inc has verified that Respondent is bound by the Gname 028 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 June 5, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of June 26, 2023 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@avnetmemec-silica.com. Also on June 5, 2023, the Chinese and English 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Notwithstanding that the Registration Agreement is written in Chinese, pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language and that going forward in Chinese would present an undue burden on Complainant. After considering the circumstances of the present case including Respondent’s failure to respond after receiving notice of the Complaint, the Panel concludes that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant distributes services in the electrical, electronic, and computer equipment and components in the US and other countries.
Complainant has rights in the AVNET, MEMEC, and SILICA marks through Complainant’s registration of such marks with international agencies including the AVENT mark through the United States Patent and Trademark Office (“USPTO”).
Respondent’s <avnetmemec-silica.com> domain name is identical or confusingly similar to Complainant’s AVNET, MEMEC, and SILICA marks as it incorporates the entirety of each mark and adds a hyphen and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <avnetmemec-silica.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Respondent been authorized by Complainant to use its trademarks. Respondent has not used the at-issue domain name in connection with a bona fide offering of goods or services as Respondent is using the domain name to address an adult-orientated website.
Respondent registered and uses the <avnetmemec-silica.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the at-issue domain name to attract and confuse users for commercial gain. Additionally, Respondent’s opportunistic bad faith is evidenced by Respondent using the disputed domain name that contains three of Complainant’s marks. Further, Respondent used a privacy service to conceal its identity. Lastly, Respondent uses the disputed domain name in bad faith to resolve to an adult-orientated website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the AVNET, MEMEC, and SILICA marks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the AVNET, MEMEC, and SILICA trademarks.
Respondent used the at-issue domain name to address a website that displays adult-oriented content.
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”).
The at-issue domain name is confusingly similar to trademarks in which Complainant has rights.
Complainant shows that it registered the AVNET, MEMEC, and SILICA marks with multiple government agencies worldwide including the USPTO. Complainant’s registration for AVNET, MEMEC, and SILICA with at least one recognized trademark registrar demonstrates its rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”).
Respondent’s <avnetmemec-silica.com> domain name contains three of Complainant’s trademarks and a hyphen, with all followed by the “.com” top-level domain name. The differences between Complainant’s trademarks and Respondent’s at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <avnetmemec-silica.com> domain name is confusingly similar to each of Complainant’s AVNET, MEMEC, and SILICA trademarks. See Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited v. Shareef Ghumra / United Foods Group, FA 1784135 (Forum June 8, 2018) (finding the domain name was confusingly similar to the complainant’s mark where “[t]he only difference between the Domain Name and the Complainant’s trademarks is the mere addition of ‘.com’ and placement of a hyphen between the elements of the BIDVEST and 3663 marks.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <avnetmemec-silica.com> domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).
The WHOIS information for the at-issue domain name identifies the registrant of <avnetmemec-silica.com> as “cai shanshan” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <avnetmemec-silica.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to address a website featuring adult-oriented content. Respondent’s use of the <avnetmemec-silica.com> in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses <avnetmemec-silica.com> to direct internet users to a website displaying adult content presumptively for commercial gain. Such use of the domain name is disruptive to Complainant’s business and demonstrates Respondent’s bad faith regarding the at-issue domain name per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also, Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also, Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the AVNET, MEMEC, and SILICA marks when it registered <avnetmemec-silica.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s AVNET, MEMEC, and SILICA trademarks and from Respondent’s combination of such marks to form the at-issue confusingly similar domain name. Respondent’s registration and use of <avnetmemec-silica.com> with knowledge of Complainant’s trademark rights in AVNET, MEMEC, and SILICA further reveals Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avnetmemec-silica.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 9, 2023
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