DECISION

ABC Distributing, Inc. v. Private

Claim Number: FA0203000105860

PARTIES

Complainant is ABC Distributing, Inc., North Miami, FL (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, PLLC.  Respondent is Private, Moscow, RUSSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <abcdist.com>, registered with BulkRegister.com.

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 March 13, 2002; the Forum received a hard copy of the Complaint on March 15, 2002.

On March 17, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <abcdist.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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@abcdist.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 April 16, 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 <abcdist.com> domain name is confusingly similar to Complainant's U.S. registered trademark.

Respondent does not have any rights or legitimate interests with respect to the <abcdist.com> domain name.

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

B. Respondent

No Response was received.

FINDINGS

Since 1955, Complainant has sold general merchandise through catalog and mail order sales services under the service marks ABC and ABC Distributing, Inc., and since July 1997, has sold this merchandise over the Internet at its website <abcdistributing.com>.

Complainant is the owner of a number of federally registered marks containing either "ABC DISTRIBUTING" or "ABC".  On April 19, 1994, United States Service Mark Registration No. 1,831,704 issued for the mark ABC DISTRIBUTING, INC.  Complainant is also the owner of United States Service Mark Registration No. 1,885,664 for the mark ABC DISTRIBUTING, INC. HOLIDAY GIFT COLLECTION and Registration No. 1,578,234 for the mark ABC and Design. 

On March 14, 2000, an entity using the alias name “Private” registered the disputed domain name.  Visitors to the <abcdist.com> site are bombarded with numerous commercial sites, including several gambling sites, and an online catalog service <catalogcity.com> that provides products that are nearly identical to those sold by Complainant at its <abcdistributing.com> domain name. 

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 that it has rights in the ABC DISTRIBUTING, INC. mark by virtue of its federal registration.  The <abcdist.com> domain name is confusingly similar to Complainant's mark in that it contains the generally accepted abbreviation (“dist”) for the word “distributing.”  See Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

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

Rights or Legitimate Interests

Respondent has not demonstrated any rights to the domain name in question.  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

Redirecting the domain name to advertisements does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor is it a noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Victoria's Secret v. Personal, FA 96491 (Nat. Arb. Forum Feb. 27, 2001) (finding no rights or legitimate interests where Respondent used a domain name confusingly similar to Complainant’s mark and redirected Internet traffic to various websites for the profit of Respondent).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the name “abcdist” pursuant to the Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Therefore, the Complainant has established that Respondent has no rights or legitimate interests with respect to the <abcdist.com> domain name.  Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because Respondent attracted Internet users to a series of advertisements using a domain name confusingly similar to Complainant’s ABC DISTRIBUTING, INC. mark, Respondent’s actions constituted bad faith registration and use under Policy ¶ 4(b)(iv).  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).

Additionally, Complainant’s mark is well known, and Respondent’s registration and use of a domain name confusingly similar to the mark implies bad faith.  See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it).

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

DECISION

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

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

Judge Harold Kalina (Ret.)

Dated:  April 22, 2002

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