Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Avnet, Inc., a New York corporation located in Phoenix, Arizona.

Respondent is Aviation Network, Inc. located in Coconut Creek, Florida.

avnet.net

The registrar is Network Solutions, Inc.

Both parties filed timely submissions in this matter. Mark V.B. Partridge was appointed as sole panelist.

Complainant is the owner of trademark registrations of AVNET for warehouse storage and distribution services relating to electrical, electronic and computer equipment. Respondent, a stocking supplier of commercial aircraft engine components, was originally established as a Florida Corporation on January 10, 1989 under the name Avnet Industries, Inc., as shown by its Articles of Incorporation, Incorporation Certificate and Employer Identification Number application submitted as evidence. Respondent registered the domain name AVNET.NET on January 18, 1996, and changed its corporate name to Aviation Network, Inc. on October 16, 1996.

When Complainant learned about Respondent’s registration of AVNET.NET, it objected based on its prior trademark registrations and invoked the prior dispute resolution policy of Network Solutions, causing respondent’s domain name to be placed on hold. Respondent then offered to sell the domain name registration for a "mutually agreeable price." The parties engaged in settlement negotiations leading to an agreement for transfer of the domain name, which never occurred. Respondent claims that the person involved in the agreement to transfer lacked authority to settle on Respondent’s behalf.

Complainant

Complainant contends that Respondent registered and used the AVNET.NET domain name in bad faith. Respondent denies that allegation and claims that it has a legitimate interest in the domain name.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

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

that the respondent has no rights or legitimate interest in the domain name; and

the domain name has been registered and used in bad faith.

In this case, it is clear that the domain names registered by Respondent are identical to the registered trademarks owned by Complainant. The addition of .net is not significant in determining similarity. Therefore, Complainant has satisfied the first element of its claim.

Under Paragraph 4(c) of the Policy, evidence of a registrant’s rights to and legitimate interest in the domain name includes:

demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Here, Respondent has satisfied the second of these factors by submitting evidence that it was known by the name AVNET for at least ten years prior to its domain name registration.

Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:

circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

registration of the domain name for the purpose of disrupting the business of competitor; or

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark . . ."

We find that the Complainant has not met its burden of proof on the issue of bad faith registration and use. There is no evidence that Respondent engages in a pattern of registering the trademarks of others as domain names. It does not appear from the evidence submitted that Respondent registered the domain name for the purpose of disrupting the business of a competitor. Further, the record contains insufficient evidence to establish that Respondent intentionally attempted to create a likelihood of confusion with Complainant’s mark. Rather, based on the record before us, it appears that Respondent used the AVNET name for a bona fide business which is not directly competitive with Complainant’s business. Finally, under the circumstances, Respondent’s offer to sell the domain name registration for a mutually agreeable price does not establish bad faith. Under the Policy, trafficking in a domain name for profit demonstrates bad faith where the registrant lacks a legitimate prior interest in the name. In this case, however, Respondent has demonstrated a long standing interest in the name and may in good faith seek more than out-of-pocket expenses to relinquish its interest in the name.

This decision should not be construed as a substantive decision on the likelihood of confusion between the parties’ respective uses of AVNET or the validity of the settlement agreement. Rather, there appears to be a genuine dispute on those issues which can not be resolved in the context of this proceeding. Legitimate disputes concerning such issues can not be resolved in a proceeding under the Policy. See Adaptive Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thornton, ICANN Case No. D2000-0006 (February 28, 2000). Rather, those are issues which should be addressed in a Court proceeding.

We find in favor of Respondent and deny Complainant’s request for relief under Paragraph 4(i) of the Policy.

Mark V. B. Partridge
Presiding Panelist

Dated: March 24, 2000