DECISION

ABC Distributing, Inc. v. Modern Empire Internet a/k/a Franky Tong

Claim Number: FA0209000126639

PARTIES

Complainant is ABC Distributing, Inc., North Miami, FL, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, PLLC.  Respondent is Modern Empire Internet, Beverly Garden, HONG KONG (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2002; the Forum received a hard copy of the Complaint on September 30, 2002.

On October 1, 2002, Enom confirmed by e-mail to the Forum that the domain name <abcdistrubting.com> is registered with Enom and that Respondent is the current registrant of the name.  Enom has verified that Respondent is bound by the Enom 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 October 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 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@abcdistrubting.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 November 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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

The <abcdistrubting.com> domain name is confusingly similar to Complainant’s ABC DISTRIBUTING, INC. mark.

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

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

B. Respondent

 Respondent has failed to come forward and submit a Response.

FINDINGS

Complainant has sold general merchandise through catalog and mail order sales services under the ABC DISTRIBUTING, INC. mark since 1955.  Complainant has provided the same general sales service over the Internet via its <abcdistributing.com> website since 1997.  Total sales under the ABC DISTRIBUTING, INC. mark have exceeded $2.9 billion in goods. 

Complainant has registered the ABC DISTRIBUTING, INC. mark with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,831,704.  Complainant also holds a registered trademark with the USPTO for the ABC DISTRIBUTING, INC. HOLIDAY GIFT COLLECTION mark.  Complainant has actively sought to protect its interest in the ABC DISTRIBUTING, INC. and related marks. 

Complainant and its ABC DISTRIBUTING, INC. services have been recognized throughout the retail business.  “The National Retail Federation and Alexa Research both ranked [Complainant] as one of the top 50 Web sites ranked by consumers sales and/or consumer visitors.”  In addition, Complainant’s website was once denoted as the “top site for the week for females” by Neilsen Netratings. 

Respondent registered the <abcdistrubting.com> domain name on August 24, 2002.  The domain name is used to reroute Internet users to a commercial website that provides links to various types of products 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 rights in the ABC DISTRIBUTING, INC. mark through proof of registration with the USPTO.

Respondent’s <abcdistrubting.com> domain name represents nothing more than a typographical error of Complainant’s ABC DISTRIBUTING, INC. mark.  The “INC.” part of Complainant’s mark is not included in the domain name but this part of the mark has little source identifying significance since it merely refers to Complainant’s business organization status.  The only significant divergence from Complainant’s mark is that “distributing” is misspelled in the domain name.  A misspelling of another entity’s mark does not defeat a claim of confusing similarity.  In addition, Respondent’s <abcdistrubting.com> domain name is clearly confusingly similar to Complainant’s valuable commercial <abcdistributing.com> website, which it has used in commerce since 1997.  Hence, Respondent’s domain name is at a minimum confusingly similar to Complainant’s ABC DISTRIBUTING, INC. mark.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

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

Rights or Legitimate Interests

Complainant contests Respondent’s rights or legitimate interests in the <abcdistrubting.com> domain name.  Respondent has not come forward with a Response so Complainant’s contentions have gone unopposed.  Complainant’s prima facie Complaint shifted the burden to Respondent to articulate its rights or legitimate interests in the domain name, and absent a Response the Panel presumes Respondent has no such rights or legitimate interests.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also 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).

In addition, due to Respondent’s failure to come forward and contest the Complaint, the Panel accepts all of Complainant’s allegations as true and will draw all reasonable inferences in favor of Respondent.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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 uses the <abcdistrubting.com> domain name to resolve to a website that offers services and links to products that are similar to Complainant’s services and products for sale at <abcdistributing.com>.  Thus, Respondent uses the confusingly similar domain name to compete in the same market as Complainant.  Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

There simply is no evidence on record that shows Respondent is commonly known by the <abcdistrubting.com> domain name, as Respondent failed to come forward to assert its rights.  Therefore, Respondent does not have any rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <abcdistrubting.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

A list of bad faith circumstances is provided under Policy paragraph 4(b).  The list is not intended to be an exhaustive set of circumstances that warrant a finding of bad faith.  The Panel may look at the totality of circumstances in order to determine whether or not the domain name has been registered and used in bad faith.  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Since Respondent’s <abcdistrubting.com> domain name is nothing more than a misspelled version Complainant’s <abcdistributing.com> website and ABC DISTRIBUTING, INC. mark, Respondent clearly had knowledge of Complainant’s rights in both the website and mark prior to registering the subject domain name.  The fact that Respondent offers similar services and products at the domain name’s associated website as Complainant is even further circumstantial proof that Respondent knew of Complainant’s interest in the mark prior to registration.  Registering a domain name with knowledge of another’s rights in a mark incorporated in the domain name in order to opportunistically trade on that mark’s goodwill amounts to bad faith registration under Policy ¶ 4(a)(iii).  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 Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, Respondent is commercially capitalizing off of the confusion the misspelled subject domain name creates.  Internet users searching for Complainant may accidentally end up at Respondent’s similar website and not be aware of the mistake since Respondent offers substantially the same services and products as Complainant.  Therefore, Respondent’s domain name registration and use constitute bad faith under Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel finds 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 shall be hereby granted.

Accordingly, it is Ordered that the domain name <abcdistrubting.com> be transferred from Respondent to Complainant.

                                                                                                Judge Harold Kalina (Ret.), Panelist

Dated:  November 13, 2002

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