DECISION

Circuit City Stores, Inc. v. Richard Leeds d/b/a Neongecko Inc.

Claim Number: FA0212000139662

PARTIES

Complainant is Circuit City Stores, Inc., Richmond, VA (“Complainant”) represented by Robert M. Tyler, of McGuire Woods LLP.  Respondent is Richard Leeds d/b/a Neongecko Inc., Seattle, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <circuitcitystores.us>, registered with Bulkregister.com, 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.

James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 30, 2002; the Forum received a hard copy of the Complaint on January 2, 2003.

On December 30, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <circuitcitystores.us> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name.  Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On January 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 22, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

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 January 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 assertions in the Complaint:

1. Respondent’s <circuitcitystores.us> domain name is confusingly similar to Complainant’s CIRCUIT CITY mark.

2. Respondent does not have any rights or legitimate interests in the <circuitcitystores.us> domain name.

3. Respondent registered and used the <circuitcitystores.us> domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant, Circuit City Stores, Inc., operates retail stores offering a wide variety of consumer electronics and computers, as well as related goods and services. Complainant is a national leader in the consumer electronics retail industry with over 600 stores throughout the United States. Complainant has used the CIRCUIT CITY mark continuously in interstate commerce and in connection with the sale of consumer electronics since 1977.

Complainant holds numerous trademarks with the United States Patent and Trademark Office (“USPTO”) reflecting the CIRCUIT CITY mark, and variations thereof. More specifically, Complainant holds the following registrations, listed without limitation:

MARK	REG. NUMBER	REG. DATE
CIRCUIT CITY	1,121,646	07/03/1979
CIRCUIT CITY SUPERSTORE Stylized	1,369,582	11/05/1985
CIRCUIT CITY Stylized	1,369,581	11/05/1985
CIRCUIT CITY and Design	1,741,933	12/22/1992
CIRCUIT CITY EXPRESS	1,880,174	02/21/1995
CIRCUIT CITY	1,966,767	04/09/1996
CIRCUIT CITY and Design	1,968,324	04/16/1996
CIRCUIT CITY Stylized	1,968,339	04/16/1996
CIRCUIT CITY	1,979,697	06/11/1996

Complainant has expended substantial resources in advertising, marketing and the promotion of its services under the CIRCUIT CITY mark. In addition to operating under the CIRCUIT CITY moniker since 1977, Complainant has offered its electronic products and related services from the <circuitcity.com> domain name since 1999.

Respondent, Richard Leeds d/b/a NeonGecko, Inc., registered <circuitcitystores.us> on April 24, 2002. Complainant’s investigation of Respondent’s use of the subject domain name indicates that Respondent uses <circuitcitystores.us> to generate web traffic for a chat website known as KLAT. The primary URL for Respondent’s KLAT website is <klat.com>. Further, Complainant’s research of the disputed domain name indicates that the <circuitcitystores.us> domain name resolves to a website that features advertisement for, inter alia, consumer electronic products similar to those offered by Complainant. Complainant has never granted Respondent permission to use the CIRCUIT CITY mark, or any variation thereof, in any manner.

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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has established rights in the CIRCUIT CITY mark through registration with the USPTO and continuous use of the mark since 1977 in relation to its electronic goods and related services.

Respondent’s <circuitcitystores.us> domain name is confusingly similar to Complainant’s CIRCUIT CITY mark. The addition of the generic term “stores” to Complainant’s mark fails to create any distinct characteristics. Respondent’s second-level domain combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business; thus, Respondent’s domain name is confusingly similar for the purpose of Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Additionally, because spaces are not allowed in domain names and top-level domains, such as “.us,” are required, their presence or absence is inconsequential to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name; therefore the <tropar.us> domain name is identical to Complainant’s TROPAR mark).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, Complainant’s submission has gone unopposed and the arguments unrefuted. In the absence of a Response, the Panel is permitted to accept as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Further, because Respondent has failed to submit a Response, it has proposed no set of circumstances that could substantiate its rights or legitimate interests in the <circuitcitystores.us> domain name. 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); see also Stop & Shop Supermarket Co. v. Anderson, FA 133637 (Nat. Arb. Forum Jan. 8, 2003) (“Through its lack of response to the Complaint, Respondent not only fails to meet its burden, but concurrently makes an affirmative gesture that it has no rights or legitimate interests in the disputed domain names”).

Pursuant to ¶¶ 4(c)(i) and (iii) of the Policy, Respondent has no rights or legitimate interests in the <circuitcitystores.us> domain name. Nothing before the Panel suggests there is a legitimate connection between the second-level domain and Respondent. There is no information that indicates Respondent holds any trademark or service mark registrations that reflect the subject domain name. Further, the notoriety and fame of Complainant’s CIRCUIT CITY mark and the popularity of Complainant’s retail stores create a presumption that Respondent is not commonly known by the “circuitcitystores” second-level domain. See CDW Computer Centers, Inc. v. The Joy Comp. FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name); 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).

Uncontested evidence reveals that Respondent’s domain name resolves to a website that offers products in competition with Complainant’s goods and services. As a result, Internet users searching for Complainant may be diverted to Respondent’s competing website. Respondent’s opportunistic use of Complainant’s mark in the domain name seeks to capitalize on the goodwill and fame of Complainant’s CIRCUIT CITY mark. Such infringing use fails to establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(ii) and (iv). See Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO May 28, 2001) (finding that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.  To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”); 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).

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

Registration and Use in Bad Faith

The Complaint addresses both registration and use in bad faith, using arguments that indicate a conjunctive “and” instead of the Policy’s disjunctive “or.” Under the usTLD Policy it is only necessary to illustrate and prove bad faith registration or use. Complainant’s most persuasive argument under Policy ¶ 4(a)(iii) is that Respondent registered the <circuitcitystores.us> domain name in bad faith based on a constructive notice theory.

Although Policy paragraph 4(b) provides criteria that constitute bad faith registration or use of a domain name, previous Panels have determined that this list is not exhaustive. The Panel is permitted to consider the “totality of circumstances” surrounding the registration of the domain name to determine if Respondent acted in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

In light of the notoriety of Complainant’s marks in the United States, Respondent’s recorded place of domicile, and the numerous registrations protecting Complainant’s mark, Respondent had knowledge of Complainant’s CIRCUIT CITY mark prior to seeking registration of the mark in the domain name. Respondent’s subsequent registration of the domain name, despite knowledge of Complainant’s rights in the mark, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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").

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

DECISION

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

Accordingly, it is Ordered that the domain name <circuitcitystores.us> be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: February 2, 2003

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