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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ingram Micro Inc v. Noton Inc.
Case No. D2001-0124
1. The Parties
The Complainant is Ingram Micro Inc. of 1600 East Saint Andrew Place, P O Box 25125 Santa Ana, California 92799-5125, USA and it is represented in this complaint by David A Segal Esq. of Gibson, Dunn & Crutcher LLP of 4 Park Place Plaza, Suite 1400, Irvine, California 92606, USA.
The Respondent for the disputed domain names, is Noton Inc. of 400 165 3rd Avenue South, Saskatoon, Saskatchewan, S7K1LS, Canada. The administrative and billing contact is Stephen Noton of the same address, and the technical contact is DomainValet Support Department, DomainValet.com of 3326 160th Avenue SE, Suite 400, Bellevue, Washington 98008. Other evidence indicates that the Respondent Noton Inc. changed to Foresightful.com very shortly before the complaint was filed.
2. The Domain Names and Registrar
The domain names which are the subject of this complaint are ingramicro.com, ingrammirco.com, and ingrimmicro.com
The Registrar of all of the domain names is Network solutions Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA (NSI)
3. Procedural History
On January 23, 2001, a complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email pursuant to the Uniform Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). This was acknowledged by the Center on January 26, 2001, and on the same day a hard copy of the Complaint was received by the Center via courier.
In its complaint, the Complainant stated that on January 23, 2001, copies of the complaint were sent to the Respondent and to NSI by USA registered mail, postage prepaid and receipt requested as well as by facsimile and by e-mail.
Upon receipt of the email copy of the complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on January 26, 2001, by email, with a copy being sent to the Respondent.
The Center sent a Request for Registrar Verification to NSI on January 29, 2001, by email. NSI responded to the Center’s request by email on January 30, 2001, verifying: (1) that it was in receipt of the complaint, (2) that it was the Registrar for the domain name in dispute, (3) that the Respondent Noton Inc. was the current registrant of all the domain names in dispute, (4) that the Respondent’s contact details were correct, (5) that NSI’s 5.0 Service agreement applied in relation to the domain names ingramicro.com, ingrammirco.com and ingrimmicro.com, and (6) that the current status of all the domain names was "in active status".
The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent and to the Complainant on January 31, 2001.
The Respondent did not reply, and the Center sent a Notification of Respondent Default to the Respondent on February 21, 2001.
The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date of March 14, 2001, to the Respondent and the Complainant on February 28, 2001, via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File by e-mail to the Panel, to the Respondent and to the Complainant on February 28, 2001. The Panel received hard copies of this material on March 1, 2001.
All other procedural requirements appear to have been satisfied.
4. Factual Background
Activities of the Complainant
The following information was asserted, as fact by the Complainant and, in the absence of any communication from the Respondent, remains uncontested.
The Complainant is a large, well-known international business and the world's largest
wholesale distributor of technology products and services to resellers in the United States, Europe, Latin America, and the Asia-Pacific region. The Complainant has more than 70 distribution centers worldwide, more than 175,000 reseller customers in more than 100 countries, and it obtains products from over 1,700 of the world's leading technology manufacturers.
The Complainant became a publicly held company in November 1996, and its stock is traded on the New York Stock Exchange. In 1996, the Complainant's net sales were no more than $12 billion, but by 1998, these had exceeded $22 billion, and as of August 2000, the Complainant reported net sales of over $22.5 billion for the prior nine months.
In 1999, the Complainant spent in excess of $9 million on advertising its products and services in industry trade publications alone.
In 1999:
The Complainants’ trademarks
Two trademarks incorporating the words "Ingram Micro" have been registered in the United States Patent and Trademark Office in the name of Ingram Industries Inc. Nos. 1620552 and 1859001, official printouts of which were attached to the complaint. According to a sworn Declaration by the Complainant’s Senior Vice President, Legal Services the Complainant is a non-exclusive licensee of these trademarks and, by virtue of its License Agreement, the Complainant must notify Ingram Industries Inc. of any alleged infringement of the trademarks. Such a notification was made in the present case, and Ingram Industries Inc. has authorized the Complainant to pursue this complaint against the Respondent.
The trademarks are and have been continually used in interstate commerce in the USA by the Complainant and its predecessor-in-interest in connection with distributorship services of information technology products since at least January 1991. In addition, either Ingram Industries Inc. or the Complainant or the latter’s subsidiaries are apparently the registered owners of trademarks incorporating the words "Ingram Micro" marks in over 20 other countries throughout the world, although no documentation regarding these trademarks was filed with the complaint. The Complainant is also the licensee of such of those non-USA trademark registrations, which are owned by Ingram Industries Inc., to protect the rights afforded by those registrations against any possible infringements.
In addition, the Complainant registered the domain name ingrammicro.com on June 27, 1996, and it has used this domain name in its advertisements and brochures since it launched a web site under this domain name in the late summer of 1996. Prior to that it had apparently used the domain name www.ingram.com.
Activities of the Respondent
Since the Respondent has not replied to the complaint, the following information is gleaned from documents supplied partly by the Complainant as part of the complaint and partly by the Panel on its own initiative.
The Respondent, Noton Inc., commenced trading in January 1994, in Vancouver, British Columbia, Canada. Its original expertise was in marketing, and it began trading online in April 1998. In 2000, the Respondent began to enter more into Internet counselling rather than web design or marketing, and it changed its name from Noton Inc. to Foresightful.com on January 17, 2001, i.e. a few days before this complaint was filed.
According to the Respondent’s web site (foresightful.sphosting.com), the Respondent currently offers the following services: Domain Protection, Web Site Overview, User Awareness, Marketing Potential, and Web Site Design. It also claims to buy and sell domain names with a portfolio which is "growing by over one hundred domains (sic) names a month."
5. The Parties’ Contentions
A. Complainant
The Complainant contends that the domain names ingramicro.com, ingrammirco.com and ingrimmicro.com are identical or confusingly similar to the trademark INGRAM MICRO and to the domain name ingrammicro.com.
In respect of the three disputed domain names, the Complainant specifically contends as follows:
Ingramicro.com: In the combined word mark that is used by the Complainant for its own domain name, two "m"'s result from the contraction of the word "Ingram" (ending with an "m") and the word "Micro" (beginning with an "m"). Although the same two words are combined in the Respondent's ingramicro.com domain name, only a single "m" is used. It is therefore simply a typographical error variation, or misspelling of the Complainant's name, trademarks and domain name.
ingrammirco.com: Similarly this domain name is virtually identical to the Complainant's name, trademarks and web site address, except that in its registration the Respondent has transposed the letters "c" and "r" that form the word "micro". This transposition is the sort of common typographical error that some users may make.
ingrimmicro.com: This domain name is also virtually identical to the Complainant's name, trademarks and web site address. Here, the Respondent has replaced the letter "a" in "ingram" with the letter "i." to make a simple misspelling of the "ingram" name.
The Complainant therefore contends that the Respondent is engaged in the practice of "typosquatting" which is the registration of domain names consisting of typographical errors or misspellings of the marks that they mimic. It quotes three UDRP Decisions to confirm that this is contrary to the Policy, namely America Media Operations, Inc. v. Erik Simons, (ICANN Case No. AF-0134); AOL v. Asian On-Line This Domain For Sale, (ICANN Case No. AF 00040000094636); Yahoo! Inc. v. Zviely et al, (WIPO Case No. D2000-0273).
The Complainant further contends that the Respondent has no legitimate rights or interests to the disputed domain names that are the subject of this complaint. When a user enters any one of the disputed domain names (i.e. he mistypes the Complainant's domain name) he is directed to an unconnected web site called Shopping-Online-Made-Easy.com. The Complainant contends that this site, which has nothing to do with any of the disputed domain names, is operated by Respondent and is one from which it presumably seeks to profit.
Additionally, a printout of the source listing for the site to which a user is redirected does not include any references related to the disputed domain names – that is, the listings do not contain any title, keywords, or metatags referencing "ingrammicro", "ingramicro", ingrimmicro", "ingram", "ingrim", or "micro"
The Complainant further contends that the Respondent's has registered a number of other domain names which are also examples of typosquatting, for example, tiffinandcompany.com which is similar to Tiffany's, pricewatershousecoopersllp.com which is similar to the name PricewaterhouseCoopers LLP, thespecialolympics.com which is similar to the name Special Olympics, Inc., and McdØnalds.com which is similar to the name McDonald's Corporation .
Lastly the Complainant contends that the disputed domain names have been registered and are being used in bad faith, specifically because:
B. Respondent
The Respondent did not file any response.
6. Discussion and Findings
The Respondent has not submitted a response. It is therefore in default, in accordance with the following paragraph of the Notification of Complaint:
"6. Default. If your Response is not sent by the above date (i.e. February 4, 2000), you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Even though there has been no response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint".
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There is no doubt that the Complainant has rights to use the trademark INGRAM MICRO and to bring this complaint. It also has considerable goodwill in the name "Ingram Micro" and the domain name ingrammicro.com. It is equally clear that although all three are not identical to the disputed domain names ingramicro.com, ingrammirco.com and ingrimmicro.com, nevertheless they are confusingly similar.
The potential for confusion on the internet is very real, given the frequency of typing errors, and on a number of occasions typosquatting has been condemned and found to violate the Policy. The Complainant mentions three Decisions, but there is also Link Clicks Inc d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol (ICANN Case D2000-1547). Also, it was said in State Farm Mutual Automobile Insurance Company v. Commercial Real States (ICANN Case FA0094728) that typosquatters "with a demonstrable pattern of conduct involving the registration of domain names that are substantially similar to the famous marks and names of other competitors" is "a plain violation of paragraph 4(b)(ii) of the Policy".
Accordingly, the Panel finds that paragraph 4(a)(i) is proved.
4(a)(ii) you have no rights or legitimate interests in respect of the domain name.
As the Complainant has alleged that the Respondent has no rights or legitimate interests in respect of the domain names at issue, the burden of proof is shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain name. In this context it has been held that ‘concrete evidence’ is more than mere personal assertions (see Do The Hustle, LLC v. Tropic Web, Case D2000-0624).
By its default, the Respondent has done nothing to contest the allegation of the Complainant that he lacks any rights or legitimate interests in the disputed domain name. However, by ensuring that a visitor to any of the three disputed web sites is directed to a completely unconnected site, the respondent has, in the opinion of the Panel, demonstrated its lack of any right or legitimate interest in the disputed domain names.
The Complainant contends that the unconnected site Shopping-Online-Made-Easy.com
is operated by the Respondent, but there is no evidence that this is the case. The site describes itself as providing "182 different sites in 26 different categories" and there is no reference in its Home Page to the Respondent. It is true that, as the Complainant contends, there is no reference on the site to the names "ingrammicro," "ingramicro," "ingrimmicro," "ingram," or "ingrim". However, in connection with the word "micro", when the Panel visited the site on February 28, 2001, there was a specific reference to "AccessMicro.Com". When clicked on, this site was revealed as being "The Leading Online Marketplace for Business Professionals, Small Office & Home Office" for Computer products, but there is no reference on it to the Complainant.
It is impossible to compare this information with what the Complainant found on the same site some time earlier as, although Annex J to the complaint (a sworn Declaration by Larry C Boyd) claims to exhibit a copy of the site, this was not in fact attached to either the electronic or the hard copy of the complaint which the Panel received.
However, the Respondent’s failure to produce any evidence in rebuttal of the Complainant’s allegations, entitles the Panel to conclude that the Respondent has no rights or legitimate interest in the disputed domain names, see Woolworths plc v. David Anderson (ICANN Case D2000-1113). Consequently, since no other circumstance has been evidenced by the Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy. Therefore the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain name and that paragraph 4(a)(ii) has been proved.
4(a)(iii) the domain name has been registered and is being used in bad faith.
By its default, the Respondent has not responded to the very specific allegation of the Complainant that it registered the domain names in bad faith. The Panel must perforce draw such inferences as it can from this inaction, from the Complainant’s uncontested allegations, from the Complainant’s documentation, and from the Panel’s own investigations. [Paragraph 10(a) of the Rules states that: "The Panel shall conduct the administrative proceeding in such a manner as it considers appropriate in accordance with the Policy and these Rules."]
With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Panel will consider each of them in turn.
4(b)(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
On December 29, 2000, the Complainant’s counsel wrote to the Respondent objecting to the registration of the domain name ingramicro.com (which was the only one whose registration he was aware of at the time).
Rather than responding to this letter, on or about January 4, 2001, the Respondent sent an electronic mail message to the two of the Complainant's employees who were identified in the Complainant's WHOIS database listings, in which it attempted to extract a sum of money for the disputed domain names and non-disclosure of alleged confidential information about the Complainant's employees, customers, and bids that had apparently been sent inadvertently by others to the Respondent. Specifically, the Respondent wrote as follows:
"We would like to once again make the offer to sell you the names, the email and the email list that they have provided. Also if we come to an agreement before 12:00 pm CST Monday January 8, 2001 we would stop any talks with reporters on possible stories relating to our domains ingramico.com, ingrammirco.com and ingrimmicro.com. The cost for the names alone would be $1,000 USD and with the email, email list and for us to forget we ever owned the names would cost $1,500 USD."
[Although reference is made in this message to a domain name ingramico.com the Respondent apparently did not, at the time of the complaint, own a registration of that name.]
About a week later, the Respondent forwarded a copy of its January 4 email message to the Complainant's counsel, and added:
"As you can see the date on the above letter has passed and we no longer offer the $1,500 option, the only option is to buy the 3 names for $1,000. We also now have 3 reporters interested in this story and 1 has confirmed he will write a story being printed on Feb. 1st, if you would like a copy of this story please let us know."
Thus, as essentially admitted in these messages from the Respondent it is attempting to blackmail the Complainant into buying the disputed domain names with threats of exposure to the media and adverse publicity to the Complainant’s employees and customers if it did not.
4(b)(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
There were attached to the complaint, two annexes B and C which, although not apparently referred to in the complaint, each consist of printouts from a WHOIS database and contain about 100 domain names belonging to Noton Inc. Exhibit B was obtained on December 29, 2000, and Exhibit C on January 16, 2001. They are not identical.
Among the names on these lists are several, which could, rightfully, belong to third parties (e.g. lemans24hourrace.com, saskatooncabs.com, saskatoonfasteners.com, mclachlanandassociates.com, primemeatlyd.com, shaughnessyapplianceappliance.com, etc. etc). However in the absence of any evidence either one way or the other, the Panel will not comment further.
In these lists, there are three names identified by the Complainant as being examples of typosquatting, namely tiffinandcompany.com which is similar to Tiffany's, pricewatershousecoopersllp.com which is similar to the name PricewaterhouseCoopers LLP, thespecialolympics.com which is similar to the name Special Olympics, Inc., and McdØnalds.com which is similar to the name McDonald's Corporation. This is evidence of a pattern, but Stephen Noton, who appears to be the prime mover behind the Respondent, has already been involved in a dispute under the Policy, very similar to the present one. In the case of Phoenix Gold International Inc. v. Stephen Noton (ICANN Case FA 0011000095965) it was held that he had wrongly registered the domain names phoenixgold.com and phoenixgoldcorp.com, which were mere misspellings of the complainant’s name and trademark, and the Panel ordered that they be transferred to the Complainant.
It would appear therefore that the Respondent has engaged in a pattern of registering as domain names, trademarks or names with which it has no connection.
4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
It is clear that the registration of three names which are so close to the name,
the trademark, and the domain name of the Complainant was intended to
disrupt the business of the Complainant, even though the Respondent is
apparently not one of its direct competitors.
4(b)(iv) 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 as to the source, sponsorship, affiliation, or endorsement of you web site or location or of a product or service on your web site or location."
By the Respondent’s own admission in messages to the Complainant, the
Respondent has attracted some of the Complainant’s customers to the
disputed domain name web sites.
These proceedings were binding on the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular the Respondent has not denied that it is using the domain names in bad faith.
The Panel therefore concludes that the Respondent has registered and used all three of the disputed domain names in bad faith.
7. Decision
For these reasons, the Panel decides that the three domain names registered by the Respondent are similar to the trademarks in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of any of the domain names, and that the Respondent’s domain names were registered and are being used in bad faith.
Accordingly, the Panel requires that the registration of the domain names ingramicro.com, ingrammirco.com and ingrimmicro.com be transferred to the Complainant.
David H Tatham
Sole Panelist
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URL: http://www.worldlii.org/int/other/GENDND/2001/467.html