Avnet, Inc. v. sean webber
Claim Number: FA1305001498810
Complainant is Avnet, Inc. (“Complainant”), represented by Jan Zecher of Fish & Richardson P.C., Germany. Respondent is sean webber (“Respondent”), Quebec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <avnetcomponents.com> and <avnet-components.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 8, 2013; the National Arbitration Forum received payment May 8, 2013.
On May 9, 2013, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <avnetcomponents.com> and <avnet-components.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2013, 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@avnetcomponents.com, postmaster@avnet-components.com. Also on May 9, 2013, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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, 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 names be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
a) Complainant contends that it has rights in the AVNET mark, used in connection with electronics and computer hardware. Complainant is the owner of registrations for the AVNET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,481,121 registered March 15, 1988) and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA459852 registered June 28, 1996). See Complainant’s Exhibits 1 and 2.
b) The <avnetcomponents.com> and <avnet-components.com> domain names are confusingly similar to Complainant’s AVNET mark.
a. Both disputed domain names use Complainant’s mark in its entirety
b. Both disputed domain names include the descriptive term “components.”
c. Both disputed domain names include the generic top-level domain (“gTLD”) “.com.”
d. None of the described differences are sufficient to distinguish the disputed domain names from Complainant’s mark.
c) Respondent has no rights to or legitimate interests with respect to the disputed domain names.
a. Respondent is not commonly known by these domain names. Complainant did not affiliate or otherwise grant Respondent permission to hold itself out as a distributor.
b. Respondent was utilizing the disputed domain names for websites of a Turkish distributor of electronic components claiming to be an “Avnet Components Distributor.” Complainant sent Respondent a cease-and-desist letter, after which the website for each disputed domain name changed and Respondent offered the disputed domain names for sale. See Complainant’s Exhibits 8-12. Respondent’s attempt to sell the disputed domain names does not give rise to a bona fide offering of goods or services and it is not a legitimate noncommercial use.
c. By claiming to be an “Avnet Components Distributor,” Respondent gave the misleading impression of being a licensed partner of Complainant.
i. Respondent is not a licensed partner of Complainant and has never had any business relations with Complainant.
d) Respondent registered and used the disputed domain names in bad faith.
a. Respondent registered the disputed domain names with the purpose of selling the domain names for valuable consideration in excess of its out-of-pocket expenses related to the registration of the disputed domain names. Complainant points to Respondent’s public offering of sale of the disputed domain names as evidence.
b. Respondent attempted to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark.
c. Respondent had actual knowledge of Complainant’s mark, but sought to use the mark to increase the ability to siphon Internet users to Respondent’s business.
b) Respondent did not submit a Response.
c) The Panel notes that Respondent registered the <avnetcomponents.com> and <avnet-components.com> domain names October 25, 2012.
Complainant established that it has rights to and legitimate interests in the marks contained within the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See 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); see also 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.”).
Identical to or Confusingly Similar
Complainant contends that it has rights in the AVNET mark, used in connection with electronics and computer hardware. Complainant is the owner of registrations for the AVNET mark with the USPTO (e.g., Reg. No. 1,481,121 registered March 15, 1988) and with CIPO (Reg. No. TMA459852 registered June 28, 1996). See Complainant’s Exhibits 1 and 2. The Panel finds that Complainant’s trademark registrations with the USPTO and the CIPO, show that Complainant has rights in the AVNET mark under a Policy ¶ 4(a)(i) analysis. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel also agrees that Respondent cannot avoid Complainant’s rights simply by listing Turkey as its location. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant further argues that the <avnetcomponents.com> and <avnet-components.com> domain names are confusingly similar to the AVNET mark. Complainant notes that each domain name takes the entire mark and adds the descriptive term “components” and “.com.” Complainant points to precedent holding that a term like “components” does nothing but enhance confusing similarity. The Panel finds that addition of a hyphen, deletion of spacing, and addition of a generic top-level domain (“gTLD”) are not relevant to this analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel notes that the term “components” is merely descriptive of the products sold by Complainant. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel finds that the <avnetcomponents.com> and <avnet-components.com> domain names both are confusingly similar to Complainant’s AVNET mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <avnetcomponents.com> and <avnet-components.com> domain names. Complainant notes that Respondent has shown no registrations for any mark related to these marks in either Canada or Turkey. Complainant avows that it has not otherwise granted Respondent authorization to use the AVNET mark in any way in Respondent’s own domain names. The Panel notes that the WHOIS information for both of these domain names lists “sean webber” as the registrant. The Panel finds no evidence to suggest that Respondent is commonly known by either of these domain names as defined in Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent was utilizing the disputed domain names for websites of a Turkish distributor of electronic components claiming to be an “Avnet Components Distributor.” Complainant states that it sent Respondent a cease-and-desist letter, after which the website for each disputed domain name changed and Respondent offered the disputed domain names for sale. See Complainant’s Exhibits 8 – 12. Complainant argues that Respondent’s attempt to sell the disputed domain names does not give rise to a bona fide offering of goods or services or a legitimate noncommercial use. The Panel agrees that Respondent’s decision to back off from its unauthorized self-promotion as a legitimate distributor of Complainant’s goods, and instead attempt to sell this domain name to Complainant, illustrates neither a Policy ¶ 4(c)(i) bona fide offering of goods and services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Complainant states that by claiming to be an “Avnet Components Distributor,” Respondent gave the misleading impression of being a licensed partner of Complainant. Complainant attests that Respondent is not a licensed partner of Complainant and has never had any business relations with Complainant. Complainant suggests that absent the offering of the domain name for sale, Respondent’s use of the domain name to run an illegitimate business under the pretext that he was a distributor is evidence that Respondent lacks rights and legitimate interests. The Panel agrees that Respondent’s misrepresentations to Internet users concerning his relationship with Complainant is evidence that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in these domain names. See Hewlett-Packard Co. v. Burgar, FA 93564 (Nat. Arb. Forum Apr. 10, 2000) (finding that the respondent has no rights or legitimate interests in the <hewlettpackard.com> domain name, because the respondent is not a licensed dealer of Hewlett-Packard products and has not demonstrated any right except to declare that he is affiliated with a licensed re-seller of the complainant’s products).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered the disputed domain names with the purpose of selling the domain names for valuable consideration in excess of its out-of-pocket expenses related to the registration of the disputed domain names. Complainant points to Respondent’s public offering of sale of the disputed domain names as evidence. The Panel notes that Complainant provided evidence that the domain names are being put up for sale, but that no price at all is listed. See Complainant’s Exhibits 11 – 12. The Panel nonetheless agrees that Respondent’s public offering of this domain name, only after receiving a cease and desist letter notifying Respondent of Complainant’s rights, provides evidence that Respondent had bad faith intentions in its registration and use of the domain name under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant also argues that Respondent attempted to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. The Panel again notes that the original websites associated with the <avnetcomponents.com> and <avnet-components.com> domain names included bolded statements: “AVENT COMPONENTS DISTRIBUTOR KOMPONENT ONLINE SATIS VISIT US www.terkomponent.com.” See Complainant’s Exhibits 8 – 9. The Panel agrees that Respondent’s use of these domain names to create confusion among Internet users by suggesting that it was a distributor of Complainant’s goods in order to commercially benefit demonstrates facts that support findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002) (finding that the respondent, through the use of the complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself without the complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name).
Complainant also argues that Respondent had actual knowledge of Complainant’s mark, and used the entire AVENT mark in order to increase Respondent’s ability to attract Internet users to Respondent’s business. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under a Policy ¶ 4(a)(iii) analysis. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avnetcomponents.com> and <avnet-components.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 21, 2013.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page