Circuit City Stores, Inc. v. Richard
Leeds d/b/a Neongecko Inc.
Claim Number: FA0212000139662
PARTIES
Complainant
is Circuit City Stores, Inc.,
Richmond, VA (“Complainant”) represented by Robert M. Tyler, of
McGuire Woods LLP. Respondent is Richard Leeds d/b/a Neongecko Inc.,
Seattle, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <circuitcitystores.us>,
registered with Bulkregister.com, 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.
James
A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on December 30, 2002; the Forum received a hard copy of the Complaint on January
2, 2003.
On
December 30, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that
the domain name <circuitcitystores.us>
is registered with Bulkregister.com, Inc. and that Respondent is the current
registrant of the name. Bulkregister.com,
Inc. has verified that Respondent is bound by the Bulkregister.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On
January 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 22,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 29, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the 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 makes the following
assertions in the Complaint:
1. Respondent’s <circuitcitystores.us>
domain name is confusingly similar to Complainant’s CIRCUIT CITY mark.
2. Respondent does not have any rights or
legitimate interests in the <circuitcitystores.us> domain name.
3. Respondent registered and used the <circuitcitystores.us>
domain name in bad faith.
B. Respondent failed to submit a Response.
FINDINGS
Complainant, Circuit City Stores, Inc.,
operates retail stores offering a wide variety of consumer electronics and
computers, as well as related goods and services. Complainant is a national
leader in the consumer electronics retail industry with over 600 stores
throughout the United States. Complainant has used the CIRCUIT CITY mark
continuously in interstate commerce and in connection with the sale of consumer
electronics since 1977.
Complainant holds numerous trademarks
with the United States Patent and Trademark Office (“USPTO”) reflecting the
CIRCUIT CITY mark, and variations thereof. More specifically, Complainant holds
the following registrations, listed without limitation:
|
MARK |
REG. NUMBER |
REG. DATE |
|
CIRCUIT
CITY |
1,121,646 |
07/03/1979 |
|
CIRCUIT
CITY SUPERSTORE Stylized |
1,369,582 |
11/05/1985 |
|
CIRCUIT
CITY Stylized |
1,369,581 |
11/05/1985 |
|
CIRCUIT
CITY and Design |
1,741,933 |
12/22/1992 |
|
CIRCUIT
CITY EXPRESS |
1,880,174 |
02/21/1995 |
|
CIRCUIT
CITY |
1,966,767 |
04/09/1996 |
|
CIRCUIT
CITY and Design |
1,968,324 |
04/16/1996 |
|
CIRCUIT
CITY Stylized |
1,968,339 |
04/16/1996 |
|
CIRCUIT
CITY |
1,979,697 |
06/11/1996 |
Complainant has expended substantial
resources in advertising, marketing and the promotion of its services under the
CIRCUIT CITY mark. In addition to operating under the CIRCUIT CITY moniker
since 1977, Complainant has offered its electronic products and related
services from the <circuitcity.com> domain name since 1999.
Respondent, Richard Leeds d/b/a
NeonGecko, Inc., registered <circuitcitystores.us> on April 24,
2002. Complainant’s investigation of Respondent’s use of the subject domain
name indicates that Respondent uses <circuitcitystores.us> to
generate web traffic for a chat website known as KLAT. The primary URL for
Respondent’s KLAT website is <klat.com>. Further, Complainant’s research
of the disputed domain name indicates that the <circuitcitystores.us>
domain name resolves to a website that features advertisement for, inter
alia, consumer electronic products similar to those offered by Complainant.
Complainant has never granted Respondent permission to use the CIRCUIT CITY
mark, or any variation thereof, in any manner.
DISCUSSION
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 the 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 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; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant has established rights in the
CIRCUIT CITY mark through registration with the USPTO and continuous use of the
mark since 1977 in relation to its electronic goods and related services.
Respondent’s <circuitcitystores.us>
domain name is confusingly similar to Complainant’s CIRCUIT CITY mark. The
addition of the generic term “stores” to Complainant’s mark fails to create any
distinct characteristics. Respondent’s second-level domain combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business; thus, Respondent’s domain name is confusingly similar
for the purpose of Policy ¶ 4(a)(i). See Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic
word describing the type of business in which Complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see
also Space
Imaging LLC v. Brownwell, 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).
Additionally, because spaces are not
allowed in domain names and top-level domains, such as “.us,” are required,
their presence or absence is inconsequential to a Policy ¶ 4(a)(i) analysis. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum
Jan. 7, 2002) (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”); see also Tropar Mfg.
Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding the addition
of the country-code “.us” fails to add any distinguishing characteristic to the
domain name; therefore the <tropar.us> domain name is identical to
Complainant’s TROPAR mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, Complainant’s submission has gone
unopposed and the arguments unrefuted. In the absence of a Response, the Panel
is permitted to accept as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Further, because
Respondent has failed to submit a Response, it has proposed no set of
circumstances that could substantiate its rights or legitimate interests in the
<circuitcitystores.us> domain name. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true); see also Stop & Shop Supermarket Co. v.
Anderson, FA 133637 (Nat. Arb. Forum Jan. 8, 2003) (“Through its lack of
response to the Complaint, Respondent not only fails to meet its burden, but
concurrently makes an affirmative gesture that it has no rights or legitimate
interests in the disputed domain names”).
Pursuant to ¶¶ 4(c)(i) and (iii) of the
Policy, Respondent has no rights or legitimate interests in the <circuitcitystores.us>
domain name. Nothing before the Panel suggests there is a legitimate
connection between the second-level domain and Respondent. There is no
information that indicates Respondent holds any trademark or service mark
registrations that reflect the subject domain name. Further, the notoriety and
fame of Complainant’s CIRCUIT CITY mark and the popularity of Complainant’s
retail stores create a presumption that Respondent is not commonly known by the
“circuitcitystores” second-level domain. See CDW Computer Centers, Inc. v.
The Joy Comp. FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that,
because Respondent did not come forward with a Response, the Panel could infer
that Respondent had no trademark or service marks identical to <cdw.us>
and therefore had no rights or legitimate interests in the domain name); see
also Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
Respondent was not commonly known by a domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark).
Uncontested evidence reveals that
Respondent’s domain name resolves to a website that offers products in
competition with Complainant’s goods and services. As a result, Internet users
searching for Complainant may be diverted to Respondent’s competing website.
Respondent’s opportunistic use of Complainant’s mark in the domain name seeks
to capitalize on the goodwill and fame of Complainant’s CIRCUIT CITY mark. Such
infringing use fails to establish rights or legitimate interests in the domain
name under Policy ¶¶ 4(c)(ii) and (iv). See Madonna Ciccone p/k/a
Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO May 28, 2001)
(finding that “use which intentionally trades on the fame of another cannot
constitute a ‘bona fide’ offering of goods and services. To conclude otherwise would mean that a
Respondent could rely on intentional infringement to demonstrate a legitimate
interest, an interpretation that is obviously contrary to the intent of the
Policy”); 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 Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
The
Complaint addresses both registration and use in bad faith, using arguments
that indicate a conjunctive “and” instead of the Policy’s disjunctive “or.”
Under the usTLD Policy it is only necessary to illustrate and prove bad faith
registration or use. Complainant’s most persuasive argument under Policy
¶ 4(a)(iii) is that Respondent registered the <circuitcitystores.us>
domain name in bad faith based on a constructive notice theory.
Although
Policy paragraph 4(b) provides criteria that constitute bad faith registration
or use of a domain name, previous Panels have determined that this list is not
exhaustive. The Panel is permitted to consider the “totality of circumstances”
surrounding the registration of the domain name to determine if Respondent
acted in bad faith. See Cellular
One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the
criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith
evidence); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
In
light of the notoriety of Complainant’s marks in the United States,
Respondent’s recorded place of domicile, and the numerous registrations
protecting Complainant’s mark, Respondent had knowledge of Complainant’s
CIRCUIT CITY mark prior to seeking registration of the mark in the domain name.
Respondent’s subsequent registration of the domain name, despite knowledge of
Complainant’s rights in the mark, constitutes bad faith registration under
Policy ¶ 4(a)(iii). See Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in
light of the notoriety of Complainant’s famous marks, Respondent had actual or
constructive knowledge of the BODY BY VICTORIA marks at the time she registered
the disputed domain name and such knowledge constituted bad faith); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
that “there is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the usTLD Policy, the Panel
concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <circuitcitystores.us>
be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 2, 2003
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