DECISION

ABC Distributing, Inc. v. ABCDISTIBUTING.COM

Claim Number: FA0205000114353

PARTIES

Complainant is ABC Distributing, Inc., North Miami, FL (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn, PLLC.  Respondent is ABCDISTIBUTING.COM, Los Angeles, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <abcdistibuting.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 22, 2002.

On May 22, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <abcdistibuting.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2002 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@abcdistibuting.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <abcdistibuting.com> domain name is confusingly similar to Complainant’s registered ABC DISTRIBUTING, INC. family of marks.

2. Respondent has no rights or legitimate interests in the <abcdistibuting.com> domain name.

3. Respondent registered and used the <abcdistibuting.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous U.S. Patent and Trademark Office (“USPTO”) registrations listed on the Principal Register for its ABC DISTRIBUTING, INC. family of marks, specifically: Reg. No. 1,831,704 for the ABC DISTRIBUTING, INC. mark registered on April 19, 1994; Reg. No. 1,885,664 for the ABC DISTRIBUTING, INC. HOLIDAY GIFT COLLECTION; and Reg. No. 2,460,660 for the ABC and design mark.

Complainant sold general merchandise through catalog and mail order sales since 1955 under the ABC and ABC DISTRIBUTING, INC. marks. Since July 1997, Complainant has operated from its <abcdistributing.com> website. Complainant has sold in excess of $2.9 billion in goods under its ABC DISTRIBUTING family of marks.

Respondent registered the disputed domain name on March 22, 2002. Respondent’s domain name reroutes Internet users to a commercial online catalog located at <overstock.com>, which is attached to a website that offers similar products as those sold by Complainant.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established its rights in the ABC DISTRIBUTING, INC. family of marks through registration with the USPTO and subsequent continuous use since 1955.

Respondent’s <abcdistibuting.com> domain name is confusingly similar to Complainant’s ABC DISTRIBUTING, INC. family of marks. Respondent’s registration of a domain name that includes a slight typographical error of a famous mark represents vintage typosquatting. In the present case, Respondent’s domain name is nearly identical to Complainant’s mark, except for the deletion of the letter “r.” Respondent’s slight deviation of a famous mark fails to make Respondent’s domain name distinct from Complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Furthermore, Respondent’s domain name is more likely to cause confusion among Internet users because Respondent is offering similar services and products as Complainant. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding that the domain name <efitnesswholesale.com> is confusingly similar to Complainant’s mark, FITNESS WHOLESALE and noting that “Respondent has registered and attempted to use the disputed domain name in the same line of services as that which Complainant provides, and that this makes it likely that consumers would be confused as between these two sources”); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent failed to submit a Response in this proceeding, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name.  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed). Furthermore, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed true. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent’s registration of a domain name that emulates a famous mark, but for one inconsequential difference, fails to establish Respondent’s rights and legitimate interests in the disputed domain name. Respondent’s actions represent an attempt to divert Internet traffic to its website while opportunistically trading on Complainant’s established goodwill. Complainant’s investigation of the disputed domain name has produced uncontested evidence that Respondent is offering nearly identical services and products as Complainant at <abcdistibuting.com>. Respondent’s actions are not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor do they represent a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

It is not apparent to the Panel that Respondent is commonly known as “ABCDISTIBUTING.COM” or by the <abcdistibuting.com> domain name that Respondent registered. Respondent has failed to come forward with any evidence establishing its identity as corresponding to a related business reflecting the “ABCDISTIBUTING.COM” moniker. Thus, Respondent has failed to show rights or legitimate interests under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the famous nature of Complainant’s mark, Complainant’s extensive use of its mark in the sale of goods since 1955, and Complainant’s listing on the Principal Register of the USPTO, Respondent is thought to have been on constructive notice as to the existence of Complainant’s mark at the time Respondent registered the infringing <abcdistibuting.com> domain name. Thus, Respondent’s registration of the infringing domain name, despite notice of Complainant’s preexisting rights, evidences bad faith registration. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Respondent is offering goods and products nearly identical to Complainant. Because Respondent and Complainant are competitors, it can be inferred that Respondent registered the confusingly similar domain name in order to disrupt Complainant’s online ordering business. Respondent’s actions represent bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of the Complainant, a competitor of the Respondent).

Lastly, Respondent intentionally registered a domain name that is nearly identical to Complainant’s famous mark in order to attract, for commercial gain, Internet users searching for Complainant’s products and services. Respondent registered the disputed domain name in order to capitalize from confused Internet users who accidentally mistype Complainant’s <abcdistributing.com> domain name. Respondent’s deliberate attempts to ensnare Complainant’s consumers represents bad faith use pursuant to Policy ¶ 4(b)(iv). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also  TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Therefore, the Panel determines that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <abcdistibuting.com> domain name be TRANSFERRED.

John J. Upchurch, Panelist

Dated: July 9, 2002

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