Abt Electronics, Inc. v. Gregory Ricks
Claim Number: FA0701000904239
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@abt.com 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
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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.
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.").
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 <abt.com> domain name be TRANSFERRED
from Respondent to Complainant.
On behalf of the Panel, David S. Safran, Panel
Chair
Dated: March 27, 2007
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