All American Semiconductor, Inc. v
Russell Allen
Claim
Number: FA0503000433153
Complainant is All American Semiconductor, Inc. (“Complainant”),
represented by Dominique R. Shelton, of Folger, Levin and Kahn, LLP,
1900 Avenue of the Stars, Floor 28, Los Angeles, CA 90067. Respondent is Russell Allen (“Respondent”), 1324 N. Liberty Lake Rd. #205,
Liberty Lake, WA 99019.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <allamericancomponents.com>, registered
with Network Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 2, 2005.
On
March 8, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <allamericancomponents.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
March 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 28, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@allamericancomponents.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <allamericancomponents.com>
domain name is confusingly similar to Complainant’s ALL AMERICAN mark.
2. Respondent does not have any rights or
legitimate interests in the <allamericancomponents.com> domain
name.
3. Respondent registered and used the <allamericancomponents.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, All
American Semiconductor, Inc., has used the ALL AMERICAN mark in association
with the distribution of electronic components continuously in commerce since
1964. Complainant has registered the
ALL AMERICAN mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 1,440,294 issued May 19, 1987).
Respondent
registered the <allamericancomponents.com> domain name on February
24, 2004. Respondent’s domain name
resolves to a website that offers competing high technology electronic
components in direct competition with Complainant.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established rights in the ALL AMERICAN mark through registration of the mark
with the USPTO and through continuous use of the mark in commerce since
1964. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <allamericancomponents.com> domain name
is confusingly similar to Complainant’s ALL AMERICAN mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely adds the term “components,” which
describes Complainant’s business. Such
an addition is insufficient to negate a finding of confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of Complainant combined with a generic word or term); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Furthermore,
the addition of the generic top-level domain “.com” and the omission of the
space between the terms of Complainant’s mark is not enough to overcome a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that the respondent’s failure to respond allows all reasonable inferences of
fact in the allegations of the complaint to be deemed true).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <allamericancomponents.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Furthermore,
Respondent is using the <allamericancomponents.com> domain name,
which is confusingly similar to Complainant’s ALL AMERICAN mark, to sell high
technology electronic components in direct competition with Complainant. Such competing use is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). Thus, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that the respondent’s appropriation of the complainant’s mark to
market products that compete with the complainant’s goods does not constitute a
bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to the
complainant’s mark and that the respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods).
Moreover,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or is authorized to register domain names featuring
Complainant’s ALL AMERICAN mark. Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the <allamericancomponents.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar domain name to operate a website that sells
electronic components in direct competition with Complainant. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See SR Motorsports v. Rotary Performance, FA
95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the
domain names were registered for the primary purpose of disrupting the
competitor's business when the parties are part of the same, highly specialized
field); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
Since
Respondent’s <allamericancomponents.com> domain name is
confusingly similar to Complainant’s ALL AMERICAN mark, consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus,
Respondent’s commercial use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where the respondent registered the domain
name <bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
Furthermore,
Respondent registered the <allamericancomponents.com> domain name
with actual or constructive knowledge of Complainant’s rights in the ALL
AMERICAN mark due to Complainant’s registration of the mark with the
USPTO. Furthermore, the Panel infers
that Respondent registered the domain name with actual knowledge of
Complainant’s rights in the mark due to the obvious connection between the
content featured on Respondent’s website and Complainant’s business. Registration of a domain name featuring
another’s mark despite actual or constructive knowledge of another’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that, because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <allamericancomponents.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 15, 2005
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