DECISION

Circuit City Stores West Coast, Inc. and Circuit City Stores Inc. v. Eva J. Coleman a/k/a Virtual Marketing Concepts

Claim Number:  FA0310000203206

PARTIES

Complainant is Circuit City Stores West Coast, Inc. and Circuit City Stores Inc. (collectively, “Complainant”) represented by Robert M. Tylor, of McGuire Woods LLP, One James Center, 901 East Cary Street, Richmond, VA, 23219.  Respondent is Eva J. Coleman, 14 Savanah Highway, Suite 15, Beaufort, SC, 29906.  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <circuit-city.net>, registered with Network Solutions, 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 October 16, 2003; the Forum received a hard copy of the Complaint on October 16, 2003.

On October 21, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <circuit-city.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 October 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 2003 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@circuit-city.net 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 14, 2003, 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 Circuit City Stores West Coast, Inc.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <circuit-city.net> domain name is identical to Complainant’s CIRCUIT CITY marks.

2. Respondent does not have any rights or legitimate interests in the <circuit-city.net> domain name.

3. Respondent registered and used the <circuit-city.net> domain name in bad faith.

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

FINDINGS

Complainant is a national leader in the consumer electronics retail industry with over 600 stores throughout the United States.  Complainant operates retail stores selling a wide variety of consumer electronics and computers, as well as related goods and services. 

Complainant is the holder of numerous registrations on the Principal Register with the United States Patent and Trademark Office (“USPTO”) for the CIRCUIT CITY marks.  For example, Complainant holds USPTO Registration No. 1,121,646 (registered on July 3, 1979), Registration No. 1,966,767 (registered on April 9, 1996) and Registration No. 2,202,309 (registered on November 3, 1998) for its CIRCUIT CITY marks.  In addition, Complainant has been using its CIRCUIT CITY marks continuously in interstate commerce, in connection with the sale of consumer electronics and related goods and services, since 1977.

Complainant has invested substantially in advertising, marketing and promoting its services under the CIRCUIT CITY marks on a nationwide basis.  Complainant has extensively used its marks in television and radio commercials, print advertisement and on the Internet.  Specifically, Complainant began operating its website at <circuitcity.com> in fall of 1995, where it advertises its stores and services.  Since July 21, 1999, Complainant has also sold its products directly to consumers through its website.

On July 26, 2003, Respondent registered the <circuit-city.net> domain name.  The website at the <circuit-city.net> domain name imitated Complainant’s <circuitcity.com> website.  Respondent’s website displayed Complainant’s mark.  At the website, visitors were permitted to browse electronics products and select products for purchase.  Visitors who wanted to make a purchase were required to submit personal identification information, as well as credit card information.  Since Complainant notified the company hosting Respondent’s website of the problem with Respondent, the <circuit-city.net> domain name has been used to direct traffic to a website that, like Complainant’s website, advertises cellular telephones.

Complainant has never granted Respondent permission to use any of its CIRCUIT CITY marks in any manner.

Counsel for Complainant contacted Respondent inquiring about its registration of the <circuit-city.net> domain name.  Respondent indicated that it had been the victim of a stolen credit card scheme.  Until Respondent spoke with Complainant’s counsel, it had been unaware that its name and telephone number had been used to register the <circuit-city.net> 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 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 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

The Panel finds that Complainant has established rights in the CIRCUIT CITY marks through its multiple registrations of the marks on the Principal Register of the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. 

Respondent’s <circuit-city.net> domain name is identical to Complainant’s CIRCUIT CITY marks.  Respondent added a hyphen between the words “circuit” and “city”, which comprise Complainant’s mark.  Respondent’s addition of a hyphen does not create the distinction necessary to overcome the identical or confusing similarity analysis under Policy ¶ 4(a)(i).  In addition, Respondent added the top-level domain “.net” to Complainant’s marks.  The addition of a top-level domain is insignificant since all domain names require a top-level domain.  Accordingly, the Panel finds that Respondent’s domain name is identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

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

Rights or Legitimate Interests

In this proceeding, Respondent did not respond to the Complaint.  Consequently, there have been no circumstances presented to the Panel showing that Respondent has any rights or legitimate interests in the <circuit-city.net> domain name.  To the contrary, all the evidence before the Panel supports a finding that Respondent lacks rights and legitimate interests in the domain name.  Thus, the Panel finds that Respondent does not have rights and legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Complainant has not permitted Respondent to use its CIRCUIT CITY marks for any purpose.  Furthermore, there is no evidence before the Panel suggesting that Respondent is known by the <circuit-city.net> domain name.  Thus, the Panel concludes that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent attempted to pass itself off as Complainant by displaying Complainant’s mark at its website and by allowing consumers to browse electronics and purchase products over the Internet, like Complainant’s website.  Furthermore, it can be inferred that Respondent is fraudulently using the personal identification information and credit card information that it gathers from consumers.  Therefore, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial of fair use pursuant Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games and Davidson & Associates, Inc. v. Ballard, FA 146621 (Nat. Arb. Forum March 13, 2002) (stating that where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, that Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).

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

Registration and Use in Bad Faith

Since Respondent registered a domain name that is identical to Complainant’s CIRCUIT CITY marks, it is likely that the website confused consumers into believing that Respondent’s website was owned and supported by Complainant.  In addition, it is likely that consumers thought that the products and services offered at Respondent’s website were endorsed or sponsored by Complainant because Respondent displayed Complainant’s mark and offered products and services that were similar to those that were offered at Complainant’s website.  Thus, the Panel finds that Respondent registered and used the <circuit-city.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).

Furthermore, Respondent registered the <circuit-city.net> domain name with either constructive or actual knowledge of Complainant’s rights in its marks.  Since Complainant’s marks were registered on the Principal Register of the USPTO prior to Respondent’s registration of the domain name, Respondent is charged with having constructive knowledge of Complainant’s rights in its mark.  Furthermore, it can be presumed that Respondent had actual knowledge given the given the fame surrounding Complainant’s marks and the fact that Respondent attempted to pass itself off as Complainant.  Thus, the Panel finds that Respondent registered the domain name in bad faith with knowledge of Complainant’s rights in the CIRCUIT CITY marks.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

Accordingly, 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 relief shall be GRANTED.

Accordingly, it is Ordered that the <circuit-city.net> domain name be TRANSFERRED from Respondent to Complainant, Circuit City Stores West Coast, Inc.

John J. Upchurch, Panelist

Dated:  November 19, 2003

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