Claim Number: FA0701000904239
Complainant is Abt Electronics, Inc. (“Complainant”), represented by Deborah
A. Wilcox, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abt.com>, registered with Moniker Online Services, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2007.
On February 7, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <abt.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 2007, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 6, 2007.
A timely Additional Submission from Complainant was received and determined to be complete on March 12, 2007.
A timely Additional Submission from Respondent was received and determined to be complete on March 20, 2007.
On March 14, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the domain <abt.com> is identical to its federally registered and common law trademark ABT except for the addition of the .com top level domain. Complainant has also contended that Respondent is not known by the name ABT, that Respondent has made no preparation for or actual use of the domain name for the bona fide offering of goods and services, but rather uses it only to provide pay-per-click advertising. Complainant has also asserted that the domain <abt.com> has been registered and is being used by Respondent in bad faith as evidenced by the fact that Respondent had actual notice of Complainant’s mark, “abt” has no meaning in relation to consumer electronics, Respondent is using the domain solely to earn revenue from the goodwill associated with Complainant’s mark, and the website associated with the <abt.com> domain looks like an official site of the Complainant.
Respondent contends that Complainant has not adequately demonstrated that it has rights in the “abt” mark predating the registration date of the domain. Respondent also contends that its use of <abit.com> was held to be proper and “abt” being a common misspelling of “abit” that it is appropriate for Respondent to own the domain using that common misspelling. Respondent also contends that, since it was once authorized to link to Complainant that such should have bearing on its right to use the <abt.com> domain. Still further, it is contended that the cases cited by Complainant are misleading.
C. Additional Submissions
In its additional submission, Complainant contends that, by virtue of
more than five years of substantially exclusive and continuous use of ABT as a
mark, by statute it has presumptively obtained acquired distinctiveness and,
that its use of the mark ABT has been nationwide and not restricted to
In its additional submission, Respondent contends that Complainant’s additional submission was improper since such is not authorized by the UDRP rules, that the link cited by Complainant as evidence of bad faith was authorized by Complainant, and there is no evidence that the original registration was in bad faith as is required.
The Panel finds that Complainant has established trademark rights in the mark ABT and that the domain name <abt.com> is identical thereto but for the “.com” top level domain. The Panel also finds that Respondent’s contention that <abt.com> is to protect <abit.com> is contradicted by the fact that the disputed domain <abt.com> does not link to <abit.com>. The Panel also finds that an authorization to link to a website does not afford Respondent the right to improperly use a link in a bad faith attempt to trade on the good will of the linked site, and Respondent has provided no evidence indicating that it was authorized to use a link to Complainant in connection with the domain in dispute. The Panel also finds that Respondent is not known by the name ABT, and that Respondent has made no preparation for or actual use of the domain <abt.com> for the bona fide offering of any goods or services.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Preliminary Issue: Res Judicata
This is the second proceeding in which Complainant has sought the transfer of the <abt.com> domain name. In Abt Electronics, Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004), the panel denied transfer of the <abt.com> domain name. Complainant alleges that the current registrant of the disputed domain name, listed in the WHOIS information as “Gregory Ricks,” is a separate entity than the respondent in the previous proceeding, and thus this is a proceeding against a new Respondent. However, Respondent asserts that it is the past and present registrant of the <abt.com> domain name despite the change in the registration information. Complainant argues that in addition to a new respondent, the website that resolves from the disputed domain name is also substantially different from its presentation prior to the previous UDRP dispute.
The Panel has determined that the Respondent and the respondent in the original proceeding are not the same entity and thus, the Panel can proceed with this dispute. However, even if the Respondent and “Motherboards.com” were one and the same, the Panel finds that res judicata does not apply due to the different facts involved including facts which did not exist at the time of the prior proceeding. See Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000), in which the panel found and subsequently applied to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision which include the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial.
The Panel also finds that Complainant has made nation-wide use of the ABT mark from a date prior to registration of the domain by Respondent. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition
of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶
4(a)(i) analysis. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
."); see also
The Panel finds that Complainant has made a prima facie case in support of its allegations, so that the burden then shifted to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has not rebutted Complainant’s contention that Respondent is neither commonly known by the disputed domain name nor licensed to register a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the <abt.com> domain name for purposes of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Furthermore, Respondent does not deny Complainant’s contention that it is using the <abt.com > domain name to operate a website that displays hyperlinks to third-party websites that are in direct competition with Complainant to obtain click-through fees for the operation of its website. Thus, the Panel finds that Respondent receives click-through fees for the operation of <abt.com> website, and that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds that Respondent registered the <abt.com> domain name for the purposes of commercially benefiting from the goodwill associated with Complainant’s mark. Also the Panel finds that Respondent’s website visually resembles Complainant’s own website, and displays hyperlinks to Complainant’s direct competitors. Moreover, the Panel finds that Respondent’s argument that it registered the disputed domain name as a version of another domain name it owns, <abit.com> does not warrant consideration as the disputed domain name does not resolve to the website at <abit.com>, but rather, sells products that Complainant also sells. Accordingly, the Panel finds that Respondent’s disputed domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website. Such a determination may lead to a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel also finds that Respondent’s use of the <abt.com> domain name to advertise goods that compete with those offered by Complainant constitutes disruption under Policy ¶ 4(b)(iii) and thus is evidence of bad faith registration and use. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent also does not deny Complainant assertion that Respondent had actual knowledge of Complainant’s mark and business when registering the disputed domain name, and the Panel infers bad faith registration and use under Policy ¶ 4(a)(iii) from such knowledge. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <abt.com> domain name be TRANSFERRED from Respondent to Complainant.
On behalf of the Panel, David S. Safran, Panel
Dated: March 27, 2007
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