Avnet, Inc. v. Benjamin IGWEBUIKE
Claim Number: FA2307002054573
Complainant is Avnet, Inc. (“Complainant”), represented by David Jackson of Lewis Roca Rothgerber Christie LLP, US. Respondent is Benjamin IGWEBUIKE (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avnettrade.com>, registered with NameCheap, Inc..
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on July 25, 2023; Forum received payment on July 25, 2023.
On July 25, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <avnettrade.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 July 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@avnettrade.com. Also on July 31, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the AVNET mark established by its ownership of a portfolio of registrations described below and its extensive use of the mark in it its electronics distribution business.
Complainant submits that its AVNET brand originated when Charles Avnet founded Complainant’s predecessor in interest in the United States in 1921, selling surplus radio parts to the public on Manhattan’s famous Radio Row. The business has since grown to become a Fortune 500 company and Complainant’s annual revenues reached $1 billion in annual revenues in 1979.
Today, Complainant employs over 15,000 people with operations around the globe and has annual revenues at approximately USD $19.5 billion.
It is submitted that as a result of Complainant’s exclusive and continuous use of the AVNET mark in the United States and other jurisdictions worldwide, the AVNET trademark has gained widespread public recognition and has become a distinctive designation of the source of Complainant’s goods.
Complainant adds that it has expended significant time and money promoting its AVNET mark which has acquired a considerable associated goodwill and reputation.
Complainant alleges that the disputed domain name is confusingly similar to its AVNET mark because it incorporates the mark in its entirety, and argues that based on this fact alone, the disputed domain name is confusingly similar to Complainant’s mark. See Pet Plan Ltd. v. Paul Nash, WIPO Case D2019-1434 (Sept. 18, 2019) (“Where a domain name incorporates the entirety of a trade mark, it will normally be considered confusingly similar to the mark.”).
It is further argued that the addition of the generic word “trade” does not distinguish or differentiate the disputed domain name from the mark; and that the addition of the generic Top Level Domain (“gTLD”) extension <.com> is not a distinguishing feature and therefore does not have an impact on the likelihood of confusion. See Crunchbase, Inc. v. crunch trade, Forum Claim FA 1918514 (Nov. 30, 2020) (“The Panel agrees that the addition of the generic term ‘trade’ to the Complainant’s CRUNCHBASE mark does not prevent confusing similarity between the Domain Name and the Complainant’s CRUNCHBASE trade mark pursuant to the Policy.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the Registrar’s WhoIs database shows that the disputed domain name was registered on April 26, 2023, decades after Complainant first registered its AVNET trademark in the United States and nearly one hundred years after Complainant’s predecessor in interest began using the mark. See United States Postal Service v. Proxy Protection LLC, Forum Claim FA 1709298 (Mar. 7, 2017) (finding respondent had no legitimate interests in domain name eddmuspostal.com and registered domain name in bad faith two years after Complainant first used the EDDM® trademark).
Complainant adds that Respondent’s true identity is privacy protected, but upon information and belief Respondent is not commonly known as “avnettrade” or any other similar designation.
Complainant also argues that Respondent could not legitimately be known as “avnettrade” or any designation incorporating Complainant’s AVNET trademark because the mark was registered and used long before Respondent’s registration of the disputed domain name in 2023. See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149 (Sep. 1, 2015) (finding no rights or legitimate interests where the respondent was not commonly known by the mark).
Moreover, Complainant refers to a screen capture of the website to which the disputed domain name resolves, which has been exhibited in an annex to the Complaint, and submits that the exhibited screen capture identifies the owner of the website as “George Potter.” Additionally, the exhibited website purports to represent a company tis registered in the United Kingdom whereas the registration number is associated with a named dissolved company as shown in a company search report, a copy of which has been annexed to the Complaint.
Complainant adds that Respondent is neither affiliated with Complainant, nor is it an authorized vendor or a licensee of Complainant.
In her declaration annexed to the Complaint, the Vice President of Corporate Marketing and Communications of Complainant, further asserts that Complainant has never given its permission for Respondent to use the mark in a domain name and Respondent is not authorized to use the mark, or any of Complainant’s other intellectual property, in any other manner.
Complainant contends that this alone is sufficient to support a finding that Respondent has no rights or legitimate interests in the disputed domain name. See Autodesk, Inc. v. Brian Byrne, meshIP, LLC, WIPO Case No. D2017-0191 (April 4, 2017) (finding no rights or legitimate interests where the respondent had not sought authorization from complainant to use its mark).
Complainant further argues that based on Complainant’s long and widespread use of the AVNET mark prior to registration of the disputed domain name, it must be inferred that Respondent had actual knowledge of Complainant’s rights in the mark prior to the registration of the disputed domain name.
Complainant submits that the exhibited screen capture shows that Respondent uses multiple pictures of Complainant’s unique AVNET logo on the resolving website. Complainant argues that it is therefore clear that Respondent has actual knowledge of Complainant and Complainant’s mark.
Complainant further submits that Respondent is not using the disputed domain name in connection with a legitimate noncommercial use or fair use under Policy ¶ 4(c)(iii), adding that Respondent is not using the disputed domain name to identify or comment upon Complainant. Thus, Respondent has no free speech interest in the disputed domain name.
It is further contended that Respondent’s use of the identical mark within the disputed domain name is not a legitimate use, but a deliberate infringement of Complainant’s rights to misdirect traffic from Complainant in order to disrupt Complainant’s business and profit from Complainant’s rights and its established goodwill in the AVNET mark.
Complainant adds that there can be no conceivable bona fide use of the disputed domain name because its intended use is a deliberate infringement of another’s rights.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith. Policy ¶ 4(a)(iii), arguing that Respondent’s registration of the disputed domain name containing Complainant’s mark is by itself sufficient to find bad faith use and registration.
Respondent also plainly had at least constructive knowledge of Complainant’s rights in its mark due to Complainant’s prior registration and use of the mark. The registration of a confusingly similar domain name with constructive knowledge of a complainant’s mark is evidence of bad faith registration and use of the domain name.
Complainant adds that the disputed domain name is registered through a privacy service, giving rise to a presumption of bad faith registration and use under the Policy.
The fact that Respondent uses multiple pictures of Complainant’s unique AVNET logo on the website associated with the disputed domain name makes clear that Respondent has actual prior knowledge of Complainant and Complainant’s mark.
There is also evidence that the website associated with the disputed domain name may be a scam that operates to phish for personal information. For example, the website states that <avnettrade.com> is registered in the United Kingdom as “avnettrade.com” with a registration number of 12128084. However, business records in the United Kingdom show that registration number 12128084 is associated with a company that was dissolved on March 23, 2021.
Another example that suggests the website associated with the disputed domain name is a scam is that it identifies as one of the website’s features “Northon Security.” This is an obvious reference to the well-known Norton antivirus and anti-malware software, but the website uses a slight misspelling and an outdated version of the Norton logo to deceive the public.
Complainant argues by arguing that all of this evidence taken together strongly suggests the website associated with the disputed domain name is merely a scam that operates to phish for personal information. Domain names that operate solely to impersonate a complainant and engage in phishing is evidence of bad faith registration and use.
Furthermore it is contended that Respondent uses the disputed domain name to attract, for commercial gain, users to its own website, which is textbook evidence of bad faith registration and use. Put another way, Respondent’s intentional diversion of customers from Complainant to its website demonstrates Respondent’s bad faith registration and use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is engaged in electronics distribution and the provision of related services under the AVNET mark, and is the owner of United States registered service mark AVNET, registration number 4,276,290, registered on the Principal Register on January 15, 2013, for services in international class 41.
The disputed domain name was registered on April 26, 2023 and resolves to a website that purports to be maintained by a British corporation which has in fact been dissolved, and infers an association with Complainant by the use of Complainant’s logo. The website
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs for the disputed domain name and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the AVNET mark, established by the ownership of the United States trademark registration described above. Complainant has also adduced in evidence other registration certificates from jurisdictions across the world, some of which appear to be expired. For the purposes of this Complaint the United States registration is sufficient to establish it rights in the AVNET mark and its standing.
Additionally, Complainant has shown that it has a substantial reputation and goodwill in the mark through its use in its electronics business. Complainant is a Fortune 500 corporation with over 15,000 people with operations around the globe and has annual revenues at approximately USD $19.5 billion.
Confusing Similarity
The disputed domain name <avnettrade.com> consists of Complainant’s AVNET mark in its entirety in combination with the word “trade” and the gTLD extension <.com>.
Complainant’s AVNET mark is the initial, dominant and only distinctive element in the disputed domain name. The addition of the generic word “trade” does not add any distinguishing character and its addition to Complainant’s mark within the disputed domain name does not prevent a finding of confusing similarity.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, as it would be considered to be a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the AVNET mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· the Registrar’s WhoIs database shows that the disputed domain name was registered on April 26, 2023, decades after Complainant first registered its AVNET trademark in the United States and nearly one hundred years after Complainant’s predecessor in interest began using the mark;
· Respondent’s true identity is privacy protected, but upon information and belief Respondent is not commonly known as “avnettrade” or any other similar designation;
· Respondent could not legitimately be known as “avnettrade” or any designation incorporating Complainant’s AVNET trademark because the mark was registered and used long before Respondent’s registration of the disputed domain name in 2023;
· the screen capture of the website to which the disputed domain name resolves, which has been exhibited in an annex to the Complaint identifies the owner of the website as “George Potter”;
· the exhibited website purports to represent a company that is registered in the United Kingdom whereas the registration number is associated with a named dissolved company as shown in a company search report, a copy of which has been annexed to the Complaint;
· Respondent is neither affiliated with Complainant, nor is it an authorized vendor or a licensee of Complainant;
· in her declaration annexed to the Complaint, the Vice President of Corporate Marketing and Communications of Complainant, asserts that Complainant has never given its permission for Respondent to use the AVNET mark in a domain name and Respondent is not authorized to use the mark, or any of Complainant’s other intellectual property, in any other manner;
· based on Complainant’s long and widespread use of the AVNET mark prior to registration of the disputed domain name, it must be inferred that Respondent had actual knowledge of Complainant’s rights in the mark prior to the registration of the disputed domain name;
· the exhibited screen capture shows that Respondent uses multiple pictures of Complainant’s unique AVNET logo on the resolving website. Complainant argues that it is therefore clear that Respondent has actual knowledge of Complainant and Complainant’s mark;
· Respondent is not using the disputed domain name in connection with a legitimate noncommercial use or fair use under Policy 4(c)(iii);
· Respondent is not using the disputed domain name to identify or comment upon Complainant and so Respondent has no free speech interest in the disputed domain name;
· Respondent’s use of the identical mark within the disputed domain name is not a legitimate use, but a deliberate infringement of Complainant’s rights to misdirect traffic from Complainant in order to disrupt Complainant’s business and profit from Complainant’s rights and its established goodwill in the AVNET mark;
· there can be no conceivable bona fide use of the disputed domain name because ITS intended use is a deliberate infringement of another’s rights.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the AVNET mark which predate the registration and first use of the disputed domain name on April 29, 2023. Furthermore Complainant is a Fortune 500 corporation with an international reputation and goodwill in the eponymous AVNET mark which is distinctive and well known.
It is therefore most improbable that the disputed domain name which is composed of only the AVNET mark to which is added the generic term ”trade”, in combination with the gTLD extension <.com> was chosen and registered without knowledge of Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant’s goodwill and reputation in the mark.
The screen capture of the website to which the disputed domain name resolves which has been exhibited in evidence in an annex to the Complaint, shows that Respondent is using Complainant’s name within the disputed domain name, and displaying Complainant’s logo without authority.
Respondent presents itself as being named “Avenettrade.com” on the website and among the FAQs (frequently asked questions) on the website the following is stated: Is avnettrade.com a registered company?” To which there is the answer “Yes, avnettrade.com is registered in the United Kingdom as “avenettrade.com with a registration number of …” The purported company number is provided on the website, but it is not necessary to repeat it in this Decision because it has been shown that it relates to a dissolved corporation.
The provision of the untruthful company registration name in the circumstances of this Complaint allows this Panel to infer that the disputed domain name was registered in bad faith.
The use of Complainant’s logo in addition to the confusingly similar name on the website allows this Panel to infer that Respondent is using the disputed domain name in the website address to impersonate Complainant.
By purporting to impersonate Complainant in this manner, Respondent is using the disputed domain name in bad faith, to attract and confuse Internet users, and to misdirect Internet traffic to Respondent’s website.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avnettrade.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: August 24, 2023
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