WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avnet, Inc. v. AV Net Avenue
Case No. D2001-0415
1. The Parties
The Complainant is Avnet, Inc. ("Complainant"), a New York corporation with its principal place of business at 2211 South 47th Street, Phoenix, Arizona, USA.
The Respondent, AV Net Avenue ("Respondent"), is the registrant of the domain name in issue with a listed mailing address of 8635 W. Sahara, Las Vegas, Nevada, USA.
2. The Domain Name
The domain name in issue is <avnetavenue.com>.
3. The Registrar of the Domain Name
The registrar of the domain name in issue is Network Solutions, Inc. ("Registrar"), located at 505 Huntmar Park Drive, Herndon, Virginia, USA.
4. Procedural History
On March 23, 2001, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <avnetavenue.com> and paid the required filing fee for appointing a single member Panel. The Complainant named AV Net Avenue as the Respondent in this proceeding.
On March 30, 2001, a "Request for Verification" concerning the domain name was sent to the Registrar. On March 30, 2001, the Registrar provided a Verification Response to the Center stating, in pertinent part, that: (i) it has received the Complaint from the Complainant; (ii) it is the registrar of the domain name in issue; (iii) "AV Net Avenue" is the current registrant of the domain name registration with a listed mailing address of 8635 W. Sahara, Las Vegas, NV 89117, USA; (iv) "Wilson, H." is the administrative contact for the domain name registration (hereinafter "Wilson") with a listed e-mail address of <firstname.lastname@example.org>; and (v) the domain name in issue is currently on "Hold".
On April 3, 2001, the Center found the Complaint to be in compliance with the formal requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On April 3, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the e-mail addresses provided for that purpose and to the mailing address listed for the Respondent. Copies of the Notification and the Complaint were also sent to the Registrar, ICANN and the Complainant. The Center received an error message when the Notification and Complaint were sent to the appropriate e-mail addresses but did not receive a notice of non-delivery when the Notification and the Complaint were sent to the mailing address listed in the registration for the Respondent.
On May 1, 2001, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On May 18, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint. The Panelist shall accordingly draw such inferences from the Respondent’s default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.
5. Factual Background
The Complaint is based on over 150 U.S. and foreign trademark and service mark registrations for AVNET and AVNET formative marks. A chart of representative registrations of these marks as well as copies of the registration certificates for U.S. Registration No. 1,481,121 (issued March 15, 1988) for the mark AVNET and U.S. Registration No. 2,237,995 (issued April 13, 1999) for the mark AVNET were attached as Exhibits C and D, respectively, to the Complaint. The Complaint is also based on the Complainant's common law trademark AVNET AVENUE.
The domain name in issue was registered on January 8, 2001. There is currently no website accessible at this domain name. A copy of the Whois information for this domain name was attached as Exhibit A to the Complaint.
6. Parties’ Contentions
The Complainant asserts that it is a Fortune® 300 Company with over $12 billion (USD) in annual sales in approximately sixty countries worldwide and that, since at least as early as 1955, has been in the business of offering a full range of warehouse storage and packaging goods, assembly and delivery of electronics, electrical and computer equipment and components, and advisory, consulting and distribution services in the field of electronics, electrical equipment and computers and computer components. The Complainant asserts that it offers these goods and services to companies and individuals by a variety of means including, but not limited to, websites on the global computer network.
The Complainant asserts that is it the owner of over 150 domestic and foreign trademark and service mark registrations for AVNET, or marks including AVNET, claiming first use in the United States on March 5, 1986. The mark AVNET was first registered on March 15, 1988 and has been continuously used in commerce without interruption since the mark’s first use in 1986. In Exhibit C of the Complaint, the Complainant submitted copies of its U.S. trademark and service mark registrations for the mark AVNET. The Complainant also submitted a chart of 155 foreign registrations for the mark AVNET and the marks including AVNET as Exhibit D to the Complaint.
The Complainant asserts ownership in numerous domain name registrations related to its marks including, without limitation, the domain names <avnet.com>, <askavnet.com>, <askavnet.net>, <askavnet.org>, <avnet-design.com>, <avnet-design.net>, <avnet-design.org>, <avnet-direct.com>, <avnet-direct.net>, <avnet-direct.org>, <avnet-es.com>, <avnet-es.net>, <avnet-es.org>, <avnet-express.com>, <avnet-express.net>, <avnet-express.org>, <avnet1.com>, <avnet1.net> and <avnet1.org>. Copies of the Whois information for these domain names were attached as Exhibit E and a chart of other representative domain name registrations incorporating the mark AVNET was attached as Exhibit F.
The Complainant asserts that its marks and domain names have been and are recognized by the public and the industry as originating from a single source, namely the Complainant, and serve to distinguish its services from the services of others. The Complainant further asserts that through its significant efforts, skills and experience, it has acquired and enjoys substantial goodwill and a valuable reputation through its distinctive marks and that the maintenance of high standards of quality and excellence for its services has contributed to this valuable goodwill and reputation. The Complainant also asserts that it has expended and continues to expend a significant amount of time and money to advertise and promote its services through its distinctive marks.
The Complainant asserts that it holds common law rights in the mark AVNET AVENUE. The Complainant asserts that it developed a suite of products that it named AVNET AVENUE and that on January 8, 2001, the Complainant issued its first press release entitled "Avnet Design Services Creates 'Avnet Avenue’ Suite of Off-the-Shelf Products, Services" through Business Wire regarding its AVNET AVENUE suite of products. (copies of press releases attached as Exhibits H and I)
The Complainant asserts that on the same day as the issuance of its press release the Respondent registered the domain name <avnetavenue.com>. The Complainant asserts that subsequently to becoming aware of the registration of the domain name in issue by the Respondent, the Complainant contacted the Respondent by e-mail on January 8, 2001. The Complainant further asserts that the Respondent replied by e-mail to the Complainant stating that "[s]omeone emailed me about a domain name I own that we no longer use <avnetavenue.com>. Yes, it is now for sale. Regards A.V. Net." (copy of e-mail from the Respondent attached as Exhibit J)
The Complainant asserts that on February 7, 2001, its attorneys requested in a letter that the Respondent cease and desist using the domain name <avnetavenue.com>, and that on February 15, 2001, its attorneys received the February 7th letter back from the U.S. Postal Service as "refused" by the Respondent. (copies of the letter and the returned envelope attached as Exhibits K and L, respectively)
The Complainant asserts that the domain name in issue is clearly confusingly similar to its marks and domain names and that the domain name includes the Complainant's federally registered mark AVNET as well as fully incorporates the Complainant's common law mark for its suite of products AVNET AVENUE.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in issue because the Respondent has not used or prepared to use this domain name in connection with a bona fide offering of goods and services. In addition, the Complainant asserts that although the Respondent's name is listed as AV Net Avenue in the Whois registry information, the Complainant believes that the Respondent is not an actual entity with a legitimate prior interest in the domain name in issue. The Complainant submitted search results of Dun & Bradstreet’s Data Universal Numbering System showing that it was unable to locate any information about the Respondent. (Exhibit N)
The Complainant asserts that the Respondent registered the domain name in issue in bad faith to prevent the Complainant as the owner of the trademark/service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of similar conduct with other mark owners. The Complainant relies on its findings of other domain name registrations including <carlsbergasia.com>, <vivendionline.com>, <dingoblueonline.com>, <corixacorporation.com>, <corixaonline.com> and <dendritejapan.com> where Wilson is the administrative contact. The Complainant submitted Whois information for these domain names as Exhibit O and trademark registration information for the marks CARLSBERG, VIVENDI, DINGO BLUE, CORIXA and DENDRITE as Exhibit P.
The Complainant further asserts that the Respondent’s registration of the domain name in issue on the same day as the Complainant’s press release regarding its AVNET AVENUE products is unlikely to be a coincidence, and that that it is highly unlikely that the Respondent had registered, used and no longer intends to continue using a domain name in a single day. The Complainant further points out that the Respondent’s administrative contact, Wilson, has registered numerous domain names incorporating third party marks under fictitious company names, creating an appearance of a legitimate interest in the domain name, such as, for example, the domain name <leading-side.com> registered to "Leading Side", the domain name <avastaonline.com> registered to AO, the domain name <subseaoil.com> registered to "SSOil" and the domain name <broadband-sources.com> registered to "BS". (Whois information for these domain names provided as Exhibit R) The Complainant asserts that Wilson is also listed as the administrative contact for these domain names and the registrations for these domain names list the same postal address as that listed for the registration of the domain name in issue.
The Complainant additionally asserts the fact that the Respondent failed to accept, acknowledge or respond to the Complainant's cease and desist letter is additional evidence of the Respondent's bad faith in registering and using the domain name in issue.
No response was received from the Respondent with respect to this proceeding.
7. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainant's favor only after the complainant has proven that the above elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
Based upon the uncontested evidence submitted, the Panelist finds that the Complainant is the owner of the registered mark AVNET and the common law trademark AVNET AVENUE. Comparing the second-level domain <avnetavenue> of the domain name in issue with the Complainant's mark AVNET, the Panelist finds that the domain name in issue is confusingly similar to the Complainant's mark. The Panelist also finds that the domain name in issue is identical to the common law trademark owned by the Complainant. The Panelist therefore concludes that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
No evidence has been presented that the Respondent has been or is preparing to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the evidence submitted by the Complainant that the Respondent is not listed as a business under the name "AV Net Avenue" suggests otherwise. Further, no evidence has been presented that the Respondent is commonly known by the domain name <avnetavenue.com> as an individual, business or other organization. Although the Panelist notes that the registrant of the domain name in issue is listed as "AV Net Avenue" in the registration, such a listing alone is not persuasive to show that the Respondent has been "commonly known by the domain name." In addition, no evidence has been presented that the Respondent is making any type of legitimate noncommercial or fair use of the domain name in issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interest in the domain name in issue and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
Reviewing the uncontested evidence, the Panelist finds that the Respondent had knowledge of the Complainant's mark AVNET and particularly, the Complainant's AVNET AVENUE products, when registering the domain name in issue. As asserted by the Complainant, it is a remarkable coincidence that the Respondent registered the domain name in issue on the same day that the Complainant issued a formal press release about the introduction of its AVNET AVENUE products. In addition, on the same day as the Respondent had registered the domain name in issue, the Respondent indicated in an e-mail to the Complainant that it was no longer using the domain name in issue and that it was now for sale. It is hard to imagine that one would register, use and then no longer intend to continue using a domain name in a single day. Accordingly, absent any rebutting evidence by the Respondent to the contrary, the Panelist finds that the Complainant has established that the Respondent registered the domain name in issue in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Complainant has also submitted evidence of other domain name registrations (<carlsbergasia.com>, <vivendionline.com>, <dingoblueonline.com>, <corixacorporation.com>, <corixaonline.com> and <dendritejapan.com>) that list Wilson as the administrative contact and that provide the Respondent’s address in both the registrant's and the administrative contact's details. Further, the Complainant has provided evidence that these domain names incorporate the registered marks of other trademark owners, such as Carlsberg Breweries Corporation, Vivendi Corporation, Dingo Blue Pty. Limited, Corixa Corporation and Dendrite Corporation. In addition, the Panelist notes that there are several Policy decisions involving respondents that were found to have registered and used domain names incorporating the marks of others in bad faith and that had domain name registrations listing the same mailing address as the Respondent or that had registrations listing "Wilson H.H." or Wilson as the administrative contact along with the same mailing address as the Respondent. See, e.g., Belo Corp. v. Liquidating Domains, WIPO Case No. D2001-0394; Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127; Rona, Inc. v. Merry Christmas Everyone!, WIPO Case No. D2000-1653; Creo Products Inc. v. Website in Development, WIPO Case No. D2000-1490; International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) v. Domains, EntreDomains Inc. and Brian Evans, WIPO Case No. D2000-1339; Atmel Corporation v. Entredomains, Inc., WIPO Case No. D2000-0775; Astro-Med, Inc. v. Merry Christmas Everyone! and B. Evans, WIPO Case No. D2000-0072.
When viewing the evidence in its entirety, the Panelist finds that the Respondent registered and used the domain name in issue in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has engaged in "a pattern of such conduct" of registering domain names incorporating the marks of others in which the Respondent has no rights or legitimate interests. The Panelist therefore concludes that Element (iii) has been satisfied with respect to the domain name in issue.
The Panelist accordingly requires that the registration of the domain name in issue be transferred to the Complainant.
Dated: July 27, 2001