WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ingram Micro Inc. v. Ted Ross
Case No. DTV2001-0018
1. The Parties
1.1 The Complainant is Ingram Micro Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 1600 East St. Andrew Place, Santa Ana, California, United States of America.
1.2 The Respondent is Ted Ross, an individual having an address at AIS, 92 Corporate Circle, Suite C753, Irvine, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <ingrammicro.tv>, which domain name is registered with The .TV Corporation International, in Los Angeles, California, United States of America (".TV"). The registrar of the disputed domain name is Network Solutions, Inc.(NSI), with business address in Herndon, Virginia, USA.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 23, 2001.
3.2 The signed original together with four copies was received on July 24, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated July 26, 2001.
3.3 On July 26, 2001, NSI confirmed by e-mail that the domain name is registered with .TV, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on July 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of August 16, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On August 17, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On August 27, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Ingram Industries, Inc. registered the service marks INGRAM MICRO D and INGRAM MICRO in connection with distributorship services in the fields of computer and microcomputer products with the United States Patent Office ("USPTO") on December 27, 1989, and August 19, 1993, respectively. Complaint, Annex D. Complainant is the non-exclusive licensee of the marks and is authorized, pursuant to the license agreement to pursue this complaint. Complaint, Annex E.
4.2 Complainant has used the marks in connection with distributorship services of information technology products since at least January, 1991.
4.3 Complainant and/or Ingram Industries, Inc. are the registered owners of INGRAM MICRO marks in over twenty other countries around the world. Complaint, Annex E. Complainant has spent in excess of US$9 million in advertising, had net sales of over US$30 billion in the year 2000, and was ranked number 49 on Fortune magazines Fortune 500 list for 2001. Complaint, Annexes F and G.
4.4 Complainant is the largest public company (based on revenues) in Orange County, California, in which both Complaint and Respondent reside.
4.5 On June 27, 1996, Complainant registered the domain name <ingrammicro.com>, and has advertised the domain name in advertisements and brochures. The domain name has resolved to a web site since the late summer of 1996.
4.6 On August 16, 2000, Respondent registered the domain name <ingrammicro.tv>.
4.7 Complainant twice notified Respondent of Complainant's service mark rights, but received no response. Complaint, Annexes I and J.
4.8 To date, Respondent has not used the domain name to develop a web site.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar or identical to the service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue <ingrammicro.tv> is identical to the service mark INGRAM MICRO in which the Complainant has rights.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. The Panel can therefore assume that Respondent has no such rights or interests. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.
6.7 However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.8 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000 0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.9 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.10 In this case, the Panel finds that where (1) the mark is one that is widely known in the United States, and in the very county where Respondent purportedly resides, and was widely known at the time Respondent registered the domain name at issue; (2) Respondent failed to respond to a letter from Complainant; and (3) Respondent failed to Respond to the Complaint at issue or to deny any of its allegations, that Respondent's inaction constitutes bad faith registration and use of the domain name at issue.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the service mark INGRAM MICRO in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain name <ingrammicro.tv> be transferred to the Complainant.
M. Scott Donahey
Dated: September 10, 2001