Avnet, Inc. v. AVNet Labs / Ekerete Akpan
Claim Number: FA1008001339078
PARTIES
Complainant is Avnet, Inc. (“Complainant”), represented by Linda Novak, of Fish & Richardson P.C., P.A., Texas, USA. Respondent is AVNet Labs / Ekerete Akpan (“Respondent”), United Kingdom.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <avnetlabs.com> and <avnethosts.com>, registered, respectively, with ENOM, INC. and TUCOWS, 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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2010.
On August 5, 2010, ENOM, INC. and TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <avnetlabs.com> and <avnethosts.com> domain names are registered, respectively, with ENOM, INC. and TUCOWS, INC. and that the Respondent is the current registrant of the names. ENOM, INC. and TUCOWS, INC. have verified that Respondent is bound by the ENOM, INC. and TUCOWS, INC. registration agreements 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 August 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2010 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@avnetlabs.com and postmaster@avnethosts.com. Also on August 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on August 30, 2010.
A timely Additional Submission was received and determined to be complete on September 3, 2010.
On September 13, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant has been in business in the fields of computer products, electronic devices, and consulting services for computers and electronics since at least 1955. In connection with that business, Complainant has used its AVNET service mark in the United States since at least 1955 and internationally since at least 1985.
- Complainant owns service mark and trademark registrations with the United States Patent and Trademark Office (“USPTO”) and the United Kingdom Intellectual Property Office (“UKIPO”) for its AVNET mark.
- Complainant also owns a registration for the domain name, <avnet.com>, through which it has operated a website since at least 1996. Complainant has established a reputation for high-quality products and services in its fields of operations.
- The disputed domain names, <avnetlabs.com> and <avnethosts.com>, are confusingly similar to Complainant’s AVNET mark. The names include Complainant’s full mark together with only short generic terms. Both terms, “labs” and “hosts”, are used frequently in relation to the field of computers, adding to the confusion.
- Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized Respondent’s use of the AVNET mark for any purpose, including use in domain names. Complainant’s use and registration of its mark predates Respondent’s use of the disputed domain names by years, if not decades.
- Respondent is not making noncommercial or fair use of the disputed domain names, as those names resolve to websites through which Respondent promotes his services in the field of computer science for his financial gain. In an email to Complainant, Respondent asserts that he has gotten work and been invited to review materials and attend conferences as a result of said websites as accessed through the disputed domain names.
- Respondent’s use of the disputed domain names – to offer services that compete with those offered by Complainant – fails to constitute a bona fide offering of goods or services per paragraph 4(c)(i) of the Policy.
- The disputed domain names were registered and are being used in bad faith. Respondent was clearly on notice of Complainant’s rights in the AVNET mark as that mark was registered in Respondent’s resident country of the United Kingdom since 1989, years before the disputed domain names were registered. Respondent is purposefully attempting to divert Internet traffic to his websites for his commercial gain through confusion with Complainant’s well known mark.
- Respondent’s websites highlight Complainant’s AVNET mark in relation to the generic terms, “labs” and “hosts”, thereby increasing the likelihood that Internet users will view Complainant and its mark as the primary sources supporting those websites.
- Respondent also owns at least 37 other domain names, some of which incorporate the trademarks (e.g., NETSEC) of third parties.
- Further evidence of Respondent’s bad faith is his offer to sell the disputed domain name, <avenetlabs.com>, to Complainant for USD $25,000.
B. Respondent
- Born in the United Kingdom of Nigerian parents, Respondent formed a limited liability company in Nigeria in 2003 called “AVNet Solutions”. The company seeks to provide home entertainment (“AV”) and Internet (“Net”) solutions. The choice of the company name had nothing to do with Complainant’s company or mark.
- Also in 2003, Respondent registered the domain name, <avnetnigeria.com>. Respondent has since discontinued use of that domain name.
- In 2005, Respondent returned to the United Kingdom and registered the disputed domain names in connection with his study of website development.
- Respondent is not guilty of infringement because “AV” and “net” are generic words, as is “labs”.
- Respondent has discontinued updating the website at <avnetlabs.com> but believes he should be compensated for transfer of the name to Complainant.
- Respondent has been working in Nigeria since January 2010 and has registered the “AVNet” trademark in that country.
C. Complainant’s Additional Submission
- Respondent offers no evidence to support his claims that he registered a company or the “AVNet” trademark in Nigeria. In any event, such actions would be irrelevant given Complainant’s service mark and trademark registrations for AVNET, which were in effect decades prior to Respondent’s claimed registrations. Respondent is simply attempting to trade off the goodwill created by Complainant in the AVNET mark.
- Clearly, Respondent has gained commercially by using the AVNET mark in the disputed domain names. Consumers looking for Complainant’s products and/or services are drawn to the disputed domain names. This represents commercial traffic from which Respondent benefits financially, since he provides services similar to those provided by Complainant. The USD $25,000 price that Respondent places upon one of the disputed names demonstrates the financial value of its use to him.
- The combined term, “Avnet”, is not generic, and has been in use by Complainant as a service mark or trademark since 1955. Thus, Respondent’s use of that mark in the disputed domain names is infringement.
- Complainant offered Respondent USD $750, as reasonable out-of-pocket costs, for the disputed domain name, <avnetlabs.com>, which Respondent declined. As further evidence of his bad faith, Respondent at that time did not indicate to Complainant that Respondent also owned the disputed domain name, <avnethosts.com>.
FINDINGS
Complainant is a United States of America company that has been in operation in the field of computer and electronic products, services and consulting since the 1950’s. Complainant has registered its AVNET mark with the USPTO (Reg. No. 1,481,121 issued March 15, 1988) and the UKIPO (Reg. No. 1,402,116 issued February 7, 1992).
Respondent is the owner of the disputed domain names, <avnetlabs.com> and <avnethosts.com>, which were registered, respectively, on April 24, 2005 and December 29, 2005. Respondent uses the disputed domain names to resolve into his websites, through which he offers computer consulting services that are similar to services offered by Complainant.
DISCUSSION
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.
Having been presented with evidence (Exhibit C) of Complainant’s registrations of its AVNET mark with both the USPTO and UKIPO, the Panel concludes that Complainant has sufficient rights in that mark to satisfy the requirements of paragraph 4(a)(i) of the Policy. See The Royal Bank of Scotland Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Services, FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).
Neither of the disputed domain names, <avenetlabs.com> or <avnethosts.com>, is identical to Complainant’s AVNET mark due to the additions of the generic top-level domain (“gTLD”), “.com” and, respectively, the generic terms, “labs” and “hosts”. However, many prior UDRP panels have found confusing similarity between disputed domain names and trademarks when the trademark is fully incorporated into the name and combined with a generic term. This is particularly true when the generic term can relate to a complainant’s business, as in this case where “labs” and “hosts” are related commonly to Complainant’s field of computer consulting. The Panel notes also that it has been well established in prior Policy cases that the addition of a gTLD in a disputed domain name does not serve as a distinguishing feature. Thus, the Panel has no difficulty in finding that the disputed domain names are confusingly similar to the Complainant’s AVNET mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i)”); see also Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004) (“…there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms.”); see also Elenie Reese v. Eddie Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (“…the mere addition of the generic top-level domain ‘.com’ is insufficient to differentiate the disputed domain name from the mark.”).
In keeping with the analysis above, the Panel rules that Complainant has succeeded in proving that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
In presenting the Panel with compelling evidence of its rights in a trademark to which the disputed domain names are confusingly similar and by contending that it has granted Respondent no authority to use that trademark in any manner, Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. This places the onus upon Respondent to come forward with clear evidence that he possesses such rights and/or interests. See AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in the Domain Name…[O]nce a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
To establish his rights and legitimate interests in the disputed domain names, Respondent contends that he formed a Nigerian Company, “AVNet Solutions”, in 2003 and obtained a registered Nigerian trademark for the mark, “AVNet”, in January 2010. However, as Respondent has furnished the Panel with no hard evidence to substantiate either claim, the Panel cannot give credence to those contentions.
Respondent has contended also that the disputed domain names are composed of generic words and are thus open to his use, whether or not they also correspond to Complainant’s trademark. Specifically, Respondent cites the terms “AV”, “net” and “labs” as being generic. However, the Panel finds that, although “AV” may be a common acronym (e.g., for Audio/Visual), “AV” is not a word. Moreover, the combination “AV” and “net” does not constitute a generic or common term. Thus, again the Panel rejects Respondent’s argument, and finds instead that Complainant’s mark, AVNET, is not composed of generic terms, but is a fanciful name not necessarily suggestive of Complainant’s business.
With respect to paragraph 4(c) of the Policy, which lists three ways in which a respondent may demonstrate its rights or legitimate interests in a domain name at issue, Respondent appears to fall far short in the estimation of the Panel.
Failing to convince the Panel that he owns a company in Nigeria called “AVNet Solutions”, Respondent has not provided the Panel with good evidence that he, Ekerete Akpan, or a company he owns, has been commonly known as either of the disputed domain names, <avnetlabs.com> or <avnethosts.com>. Thus, paragraph 4(c)(ii) is inapplicable to this case.
Evidence (Exhibit N) submitted by Complainant suggests to the Panel that Respondent uses both disputed domain names to resolve to his website, where he offers computer consulting services that compete directly with those offered by Complainant. The Panel concludes that such use is neither use “in connection with a bona fide offering of goods or services” as allowable under paragraph 4(c)(i), nor “a legitimate noncommercial or fair use” of the names as allowable under paragraph 4(c)(iii). See Option One Mortgage Corp. v. Option One Lending, D2004-1052 (WIPO Feb. 27, 2005) (“Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“…Respondent is using a domain name that is confusingly similar to the [complainant’s] mark for commercial benefit by diverting Internet users to the [respondent’s] website, which sells goods and services similar to Complainant’s goods and services. Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
For the reasons stated above, the Panel determines that Complainant has shown successfully that Respondent has no rights or legitimate interests in the disputed domain names.
Not only has Complainant furnished the Panel with evidence that Respondent’s website offers services that compete with Complainant’s, but Complainant also submitted evidence (Exhibit M), in the form of a copy of an email sent by Respondent, in which Respondent claims to gain work and referrals from the websites that he has attached to the disputed domain names. Based upon such evidence, the Panel is convinced that Respondent derives commercial gain from those websites. Given the nature of Respondent’s operations – within the same field carved out by Complainant – and the registration of Complainant’s mark in the United Kingdom – where Respondent resided when registering the disputed domain names in 2005 – it is more than evident to the Panel that Respondent knew of Complainant and its business.
Thus, the Panel is left to conclude that Respondent intentionally sought Internet user traffic through the likelihood of confusion as to the sponsorship or affiliation of the disputed domain names with the products and services of Complainant. As pointed out by Complainant (Exhibit N), this conclusion is supported by the clear distinction (and emphasis) of Complainant’s mark from the generic word “labs” as displayed on Respondent’s website.
Therefore, the Panel believes that Respondent’s actions fall neatly within the parameters of Policy paragraph 4(b)(iv), which mandates a finding by the Panel of bad faith registration and use of the disputed domain names. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Littleford Day Inc. v. NRM Equip. Co., D2004-0201 (WIPO June 30, 2004) (finding Policy paragraph 4(b)(iv) applicable, after stating, “…the fact that Respondent used <littlefordday.com> to automatically redirect users to its website located at “www.nrmequipment.com” is evidence of bad faith. Respondent sells the same type of goods sold by Complainant and competes with Complainant in its line of business.”).
The Panel notes also that Respondent’s demand that Complainant pay USD $25,000 for the disputed domain name, <avnetlabs.com> – far beyond Respondent’s reasonable out-of-pocket costs related to the name – places Respondent’s actions within the circumstance listed in Policy paragraph 4(b)(i), again calling for a determination of bad faith dealing.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
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 <avnetlabs.com> and <avnethosts.com> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: September 27, 2010
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