DECISION

 

Avnet Inc. v. Brock Jake

Claim Number: FA2403002091005

 

PARTIES

Complainant is Avnet Inc. ("Complainant"), represented by Chris A. Underwood of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Brock Jake ("Respondent"), Afghanistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <glocalwebsolutions.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 29, 2024; Forum received payment on March 29, 2024.

 

On March 29, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <glocalwebsolutions.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 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2024 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@glocalwebsolutions.com. Also on April 1, 2024, 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 April 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1. Complainant is a United States company engaged in the provision of computer software and engineering, data, business advisory and technological consultation services and it has been so engaged for several decades, globally and locally.

2. Complainant has trademark rights in the common law SOFTWEB SOLUTIONS trademark  which it has used for decades in the United States and internationally in connection with its provision of computer software and engineering, data, business advisory and technological consultation services. 

 

3. The SOFTWEB SOLUTIONS trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4. The Complainant registered the domain name <softwebsolutions.com> which it uses in its business and in particular for its website at "www.softwebsolutions.com" on which it advertises and markets legitimate SOFTWEB SOLUTIONS goods and services under its trademark.

5. Respondent registered the <glocalwebsolutions.com> domain name on August 9, 2023 ("the disputed domain name").

6. In so doing, Respondent has incorporated in the disputed domain name the substance of the Complainant's SOFTWEB SOLUTIONS trademark without any authority to do so and by deleting the term "SOFT" from the trademark and substituting the descriptive term "glocal" in the domain name and adding the generic Top-Level Domain ".com", neither of which negates a finding of confusing similarity. The disputed domain name is therefore confusingly similar to the Complainant's SOFTWEB SOLUTIONS trademark.

7. Respondent has no rights or legitimate interests in the disputed domain name. That is so because the unchallenged evidence shows that:

(a) the substance of the SOFTWEB SOLUTIONS trademark has been included in the disputed domain name in the manner described above, showing that it is confusingly similar to the trademark;

(b)  the disputed domain name has been used by the Respondent to resolve to a website which makes extensive use of the SOFTWEB SOLUTIONS mark and repeated uses of the Complainant's name, copyright images, text and contact information, all without any authority to do so;

(c) the URL of the Respondent's aforesaid website replicates the URL of the Complainant's website to which its domain name <softwebsolutions.com> resolves;

(d) the Respondent registered the disputed domain name on August 8, 2023, decades after the Complainant first used its SOFTWEB SOLUTIONS trademark;

(e) the Respondent is neither affiliated with nor an authorized vendor or licensee of the Complainant and nor has the Complainant given its permission to the Respondent to use the substance of the SOFTWEB SOLUTIONS trademark in the disputed domain name;

(f) the Respondent's true identity was privacy protected on the registration of the disputed domain name;

(g) the Respondent is not commonly known by the disputed domain name; 

(h) the website to which the Respondent has caused the disputed domain name to resolve falsely identifies its owner as the Complainant despite the fact that the Complainant used the SOFTWEB SOLUTIONS trademark long before the Respondent registered the domain name;

(i) the Respondent had actual knowledge of the Complainant's SOFTWEB SOLUTIONS trademark before it registered and used as aforesaid the disputed domain name;

(j) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i);

(k) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶4(c)(iii);

(l) the Respondent used the domain name including the SOFTWEB SOLUTIONS trademark for a deliberate infringement of the trademark to misdirect internet traffic from the Complainant and to disrupt the Complainant's business; and

(m)  there are no other circumstances that give rise to a right or legitimate interest in the domain name.

8. The disputed domain name has been registered and is being used in bad faith. That is so because:

(a) the domain name was created to imitate and trade off the Complainant and its SOFTWEB SOLUTIONS trademark and to phish for consumers' personal information;

(b) the Respondent's true identity was privacy protected on the registration of the domain name;

(c) the Complainant owns the <softwebsolutions.com> domain name and used it for its legitimate website;

(d) the Respondent has used the disputed domain name to copy webpages from the Complainant's aforesaid legitimate website, including logos, trademarks, text, graphics and organization;

(e) the Respondent's intention was to divert customers from the Complainant to the Respondent's deceptive website;

(f) the Respondent had actual knowledge of the Complainant, its trademarks and its business and services when it registered the disputed domain name;

(g) all of the facts show that the disputed domain name was registered and used to phish for the personal information of consumers;

(h) the Respondent registered the disputed domain name to disrupt the Complainant's business, to prevent the Complainant from reflecting its trademark in the domain name and to cause confusion ;

(i) the Respondent's conduct jeopardized the goodwill associated with the Complainant's trademark;

(j) the registration information provided by the Respondent for its WHOIS records shows bad faith; and

(k) all of the Respondent's aforesaid conduct demonstrates bad faith registration and use of the disputed domain name.

9. The Complainant has cited several prior UDRP decisions to support its contentions.

10. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish under the UDRP and that the disputed domain name should be transferred from the Respondent to the Complainant.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant is a United States company engaged in the provision of computer software and engineering, data, business advisory and technological consultation services and it has been so engaged for several decades, globally and locally.

2.       Complainant has established by the evidence that it has trademark rights in the common law SOFTWEB SOLUTIONS trademark which it has used for decades in the United States and internationally in connection with its provision of computer software and engineering, data, business advisory and technological consultation services.

3.       Respondent registered the <glocalwebsolutions.com> domain name on August 9, 2023 ("the disputed domain name").

4.       In so doing, Respondent has incorporated in the disputed domain name the substance of the Complainant's SOFTWEB SOLUTIONS trademark without any authority to do so and by deleting the term "SOFT" from the trademark and substituting the descriptive term "glocal" in the domain name and adding the generic Top-Level Domain ".com", neither of which negates a finding of confusing similarity. The disputed domain name is therefore confusingly similar to the Complainant's SOFTWEB SOLUTIONS trademark. 

5.       Respondent has caused the disputed domain name to resolve to a website that copies the Complainant's website, offers goods and services  under the name SOFTWEB SOLUTIONS and seeks to obtain internet users'  personal information.

6.       By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's    trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.

7.       Accordingly, the disputed domain name should be transferred to the Complainant.

DISCUSSION

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").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence shows that Complainant has common law trademark rights in the SOFTWEB SOLUTIONS trademark. That evidence comes from, among others, three sources.

 

First, the evidence of the Complainant set out in the Complaint is that since at least 2004 it has used the SOFTWEB SOLUTIONS trademark to provide AI software solutions, Internet of Things applications, data services and digital transformation services for a wide variety of enterprises from start-ups to Fortune 100 companies, employing large numbers of people; the Complainant is owned by Avnet, Inc. which employs 15,000 people with operations around the globe and with revenue of approximately $25 billion; moreover, its use of the SOFTWEB SOLUTIONS trademark has gained widespread public recognition and has become a distinctive designation of the source of the Complainant's goods and services; it has also expended significant time and money promoting its mark and has acquired goodwill associated with the mark.

 

Secondly, the evidence includes a Declaration of the Vice President of Corporate Marketing and Communications for Avnet, Inc. dated March 28, 2024, stating inter alia that the declarant can state from her personal knowledge and the records maintained by Avnet, Inc. the parent company of the Complainant in the ordinary course of business, that the SOFTWEB SOLUTIONS brand originated with Complainant's predecessor in interest, in 2004, that from then onwards Softweb Solutions, Inc., provided the above services and that, since 2018, when Avnet, Inc. acquired Softweb Solutions, Inc., Avnet Inc. has provided those services. Moreover, the declarant states that since 2018 the SOFTWEB SOLUTIONS mark has identified Avnet, Inc. and its goods and services uniquely and has acquired substantial goodwill and nationwide and worldwide recognition.

 

Thirdly, the evidence includes Complainant's current website at "www.softwebsolutions.com". The Complainant has tendered Exhibit 5 which consists of screenshots of the website, which of course are part of the Complainant's public presentation. They show detailed use of the SOFTWEB SOLUTIONS trademark and the services provided under it, what those services comprise and that the Complainant uses the mark in the services it provides for clients and partners such as Bosch, Siemens and Texas Instruments. The screenshots also carry spoken and printed testimonials that use the Softweb Solutions name and show that the participants are aware of the mark and the services provided under it.

 

It is apparent from all of the foregoing evidence that SOFTWEB SOLUTIONS is used as a trademark by the Complainant, that it relates to the aforesaid goods and services, that it is identified as the mark under which the Complainant and Softweb Solutions, Inc. have provided those goods and services and that there is wide public recognition of that fact.

 

The Panel therefore finds that the Complainant has common law trademark rights in the SOFTWEB SOLUTIONS and that it has had those rights at all material times.

 

The Complainant has thus established that it has trademark rights that give it standing to institute this proceeding.

The next question that arises is whether the disputed domain name is confusingly similar to the Complainant's SOFTWEB SOLUTIONS trademark. The Panel finds that the disputed domain name is confusingly similar to the SOFTWEB SOLUTIONS trademark. That is so because the evidence is that the Respondent has incorporated in the disputed domain name the substance of the trademark without any authority to do so, by deleting the term "SOFT" from the trademark and substituting the descriptive term "glocal" in the domain name and adding the generic Top-Level Domain ".com", none of which negates a finding of confusing similarity. The term "websolutions" remains the dominant portion of the domain name and the Panel finds that internet users would see the domain name as relating to and invoking the well-known SOFTWEB SOLUTIONS trademark. Internet users would also notice the term "glocal" that has been inserted before "websolutions" instead of "soft"  and, after wondering what it meant, would conclude that it was a compression of "global" and "local" and that in total the domain name meant and was invoking the use of goods and services offered under the SOFTWEB SOLUTIONS trademark. The generic Top-Level Domain ".com" is routinely disregarded for the purposes of the comparison being made on confusing similarity, as all domain names must have one extension or another and it adds nothing to one interpretation or the other.

The disputed domain name is therefore confusingly similar to the Complainant's SOFTWEB SOLUTIONS trademark.

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations that reflect the submissions made by the Complainant. This has been established by the evidence that shows that:

(a)                      there is no evidence that the Respondent is engaged in the software industry or any related industry and has no affiliation, connection or authorization with or from the Complainant to use its name or trademark; therefore, there is no possibility that it had any legitimate need for the domain name or had any legitimate purpose or reason in registering it or pretending to use it for a legitimate purpose;

(b)                      the substance of the SOFTWEB SOLUTIONS trademark has been included in the domain name in the manner described above, showing that the domain name is confusingly similar to the trademark;

(c)                      the domain name has been used by the Respondent to resolve to a website which makes extensive use of the SOFTWEB SOLUTIONS mark, repeated uses of the Complainant's name, its own copyright images and its text and contact information, all without any authority to do so;

(d)                       the URL of the Respondent's aforesaid website replicates the URL of the Complainant's website to which its domain name <softwebsolutions.com> resolves;

(e)                       the Respondent registered the disputed domain name on August 8, 2023, decades after the Complainant first used its SOFTWEB SOLUTIONS trademark;

(f)                      the Respondent is neither affiliated with nor is an authorized vendor or licensee of the Complainant and nor has the Complainant given its permission to the Respondent to use the substance of the SOFTWEB SOLUTIONS trademark in the domain name;

(g)                       the Respondent's true identity was privacy protected on the registration of the domain name;

(h)                       the Respondent is not commonly known by the domain name; there is no evidence to suggest that it is commonly known by the domain name; 

(i)                       the website to which the Respondent has caused the domain name to resolve falsely identifies its owner as the Complainant, despite the fact that the Complainant used the SOFTWEB SOLUTIONS trademark long before the Respondent registered the domain name;

(j)                      the Respondent had actual knowledge of the Complainant's SOFTWEB SOLUTIONS trademark before it registered the disputed domain name; that must be so because the detail in the Respondent's website is a complete copying of the Complainant's own website, including detailed images and text;

(k)                      the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i); it cannot be bone fide to steal a trademark and copy the trademark owner's website and impersonate it;

(l)                      the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶4(c)(iii); the use is clearly illegitimate, it is being made for one financial purpose or another and it is not fair in any sense;

(m)                       the Respondent used the domain name and the SOFTWEB SOLUTIONS trademark for a deliberate infringement of the trademark to misdirect internet traffic from the Complainant and to disrupt the Complainant's business; and

(n)                       there are no other circumstances that could conceivably give rise to a right or legitimate interest in the domain name.

All of these matters go to make out the prima facie case against Respondent.

 

As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

The Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. The Panel finds that all of those grounds have been made out on the evidence already referred to. In particular:

(a)                      the domain name was created to imitate and trade off the Complainant and its SOFTWEB SOLUTIONS trademark and to phish for consumers' personal information; the intention of the Respondent in this regard has been shown by the evidence that once the domain name was registered, the Respondent used it for a website, screenshots of which have been shown the Complainant's Exhibit 4 and which demonstrate that the Respondent has simply lifted pages from the Complainant's official website and duplicated them on its own website. This is shown by the fact that the images in which the Complainant clearly has copyright, also now appear on the Respondent's website. Likewise, with respect to phishing, the Respondent provided a form and clearly invited internet users to fill it in, thereby providing personal information which would be used to build up profiles on users induced to believe that they were filling in a form of the Complainant's. The only conclusion that can be drawn from this evidence is that the domain name was registered in bad faith and has been used in bad faith;

(b) the Respondent's true identity was privacy protected on the registration of the domain name; the Respondent has been deceptive and misleading from the beginning; one need only note that the Respondent, when it registered the domain name, gave its address as "Makati, Metro Manila Afghanistan;"

(c) the Respondent has used the disputed domain name to copy webpages from the Complainant's aforesaid legitimate website, including logos, trademarks, text, graphics and organization; as noted above, this has been extensive, showing bad faith in the registration of the domain name and in its use;

(d) the Respondent's intention was to divert consumers from the Complainant to the Respondent's deceptive website; the evidence shows that the intention and practice of the Respondent was to pretend that it was the Complainant and to induce internet users to believe this, so that it could more effectively ensnare them;

(e) the Respondent had actual knowledge of the Complainant, its trademarks and its business, goods and services; the Respondent could not have behaved in the deceptive manner shown by the evidence unless it had actual knowledge of the Complainant, which it clearly did;

(f) all the facts show that the dispute domain name was registered and used to phish for personal information; this has already been shown;

(g) the Respondent registered the disputed domain name to disrupt the Complainant's business, to prevent the Complainant from reflecting its trademark in the domain name and to cause confusion; the evidence shows that the Respondent acted to induce internet users to believe it was the Complainant, no doubt to extract money from them if and when it could;

(h) the evidence shows that the Respondent's conduct must have jeopardized the goodwill associated with the Complainant's trademark; 

(i) the registration information provided by the Respondent for its WHOIS records shows bad faith; this has already been shown from examining the registration details provided by the Respondent; and

(j) all of the Respondent's aforesaid conduct demonstrates bad faith registration and use of the domain name; this is the only conclusion that can be drawn from the whole of the evidence. 

The Panel therefore finds that each of the grounds relied on by the Complainant has been made out by the detailed case presented on its behalf.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the SOFTWEB SOLUTIONS trademark and in view of the conduct that the Respondent has engaged in since registering it and using it for deceptive purposes,  the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has correctly cited numerous prior UDRP decisions that support its contentions on all of the elements required to be proved.

The Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief that it seeks.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <glocalwebsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Neil Anthony Brown KC, Panelist

Dated: April 24, 2024