DECISION

Advanced Book Exchange Inc. v. Media Track, Inc. aka Vine Ent.

Claim Number: FA0202000104628

PARTIES

Complainant is Advanced Book Exchange Inc., Vancouver, BC (“Complainant”), of Advanced Book Exchange Inc.  Respondent is Media Track, Inc. aka Vine Ent., Cypress, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <abebook.com>, registered with iHoldings, d/b/a DotRegistrar.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 13, 2002; the Forum received a hard copy of the Complaint on February 15, 2002.

On February 15, 2002, iHoldings, d/b/a DotRegistrar confirmed by e-mail to the Forum that the domain name <abebook.com> is registered with iHoldings, d/b/a DotRegistrar and that Respondent is the current registrant of the name.  iHoldings, d/b/a DotRegistrar has verified that Respondent is bound by the iHoldings, d/b/a DotRegistrar 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 February 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 27, 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@abebook.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 March 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations in this proceeding:

The <abebook.com> domain name is confusingly similar to Complainant's ABEBOOKS.COM mark.  Respondent has no rights or legitimate interests in the disputed domain name. 

Respondent registered and used the disputed domain name in bad faith.

B. Respondent  did not file a Response in this proceeding.

FINDINGS

Complainant has used the ABEBOOKS.COM mark since 1995 in relation to its Internet book and software business.  Complainant has filed applications for registration of the ABEBOOKS.COM mark with the United States Patent and Trademark Office.  Complainant is an internationally known leader in the world book market.  Complainant’s website <abebooks.com> lists over 30 million books and receives an average of 1.58 million hits per day.  Complainant has offices in Canada and Germany and works with over 6,500 independent booksellers in the United States alone. Complainant also does business with booksellers in Canada, England, Germany, France, Australia, and Nepal. 

Respondent registered the disputed domain name on January 15, 1998 and, for some time,  used <abebook.com> in relation to a website directory of books and booksellers.  Complainant asked Respondent to stop using the domain name and transfer it to Complainant on two occasions.  Respondent has never responded to these requests.  At the time the Complaint was submitted, Respondent was using the disputed domain name in relation to a commercial directory of various goods and services, including books.  When a user attempted to leave Respondent’s website, pop-up advertisements appeared.

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 to and/or Confusingly Similar

Complainant, through continuous use of ABEBOOKS.COM since 1995, has established that it has common law rights in the mark.  See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).

Respondent’s <abebook.com> domain name is confusingly similar to Complainant’s mark because it merely deletes the “s” at the end of the ABEBOOKS portion of Complainant’s mark.  The omission of a letter, such as “s,” from the end of a recognized mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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 it confusingly similar to Complainant’s marks).

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

Rights to or Legitimate Interests

Respondent did not file a Response in this proceeding and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  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”).

Respondent is using the disputed domain name for a directory of links to various goods and services including booksellers other than Complainant.  Therefore, Respondent is using a confusingly similar domain name to provide services that compete with Complainant’s business.  The use of a confusingly similar domain name to offer services that compete with Complainant’s goods is not a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i).  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

Respondent, known as Media Track, is not commonly known as ABEBOOK and therefore cannot be commonly known by <abebook.com> pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also 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 and is not using the domain name in connection with a legitimate or fair use).

Respondent is not using the disputed domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is using a misspelling of Complainant’s ABEBOOKS.COM mark as a domain name to direct Internet users to a website that is not connected with Complainant.  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

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

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the domain name in bad faith.  Respondent is using a confusingly similar domain name in order to attract Complainant’s customers to Respondent’s website for Respondent’s commercial gain.   This behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s good will and attract Internet users to Respondent’s website); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent used an intriguing domain name to attract users to a website sponsored by Respondent).

Furthermore, Respondent is using a confusingly similar domain name to offer services that compete with Complainant’s services because Respondent’s website at the disputed domain name offers links to booksellers that compete with Complainant.  This activity disrupts Complainant’s business and therefore is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

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 <abebook.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 1, 2002.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/485.html