COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Arrow Electronics, Inc. v. Vitty, Inc.

Claim Number: FA0301000140637

PARTIES

The Complainant is Arrow Electronics, Inc., Melville, NY, USA (“Complainant”) represented by Bradley A. Slutsky, of King & Spalding.  The Respondent is Vitty, Inc., Taipei, TAIWAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <arrow.biz>, registered with 007 Names, Inc.

PANEL

On February 14, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum” electronically on January 9, 2003.  The Forum received a hard copy of the Complaint on January 13, 2003.

On January 15, 2003, 007 Names, Inc. confirmed by e-mail to the Forum that the domain name <arrow.biz> is registered with 007 Names, Inc. and that Respondent is the current registrant of the name.  007 Names, Inc. has verified that Respondent is bound by the 007 Names, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP”) and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”).

On January 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of Date February 6, 2003. By which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions 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.

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 “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’s submission makes the following assertions:

1. Under the UDRP, Respondent’s <arrow.biz> domain name is identical to Complainant’s ARROW mark.

2. Under the UDRP, Respondent has no rights or legitimate interests in <arrow.biz>.

3. Under the UDRP, Respondent registered and used the <arrow.biz> domain name in bad faith.

4. Under the RDRP, Respondent’s <arrow.biz> domain name is not being or will not be used primarily for a bona fide business or commercial purpose.

B. Respondent failed to submit a Response.    

FINDINGS

Complainant, Arrow Electronics, Inc., is one of the world’s largest distributors of electronic components and computer products. Complainant offers its goods and services through more than 200 sales facilities and 23 distribution centers in 40 countries and territories. Complainant has been doing business in the electronic components industry for more than 60 years.

Complainant holds two trademark registrations with the U.S. Patent and Trademark Office (“USPTO”) and numerous international trademark registrations for the ARROW mark. More specifically, Complainant holds USPTO Reg. Nos. 1,565,547 registered on November 14, 1989, and 1,606,728 registered on July 17, 1990. The following chart illustrates Complainant’s international trademark registrations:

JURISDICTION	REG. NO.	REG. DATE
European Community	300459	January 25, 2001
Austria	139.921	April 30, 1991
Benelux Countries	490.873	November 20, 1990
Denmark	VR 00.763	January 29, 1993
Finland	135.461	February 12, 1994
France	1.711.457	April 9, 1991
Germany	2.068.732	June 22, 1994
Greece	102.536	January 24, 1991
Ireland	143.796	November 21, 1990
Italy	602.270; 602.063	November 30, 1990
Portugal	270.550; 270.551	February 3, 1993
Spain	1.600.397	April 28, 1994
Sweden	246.094	January 29, 1993
United Kingdom	1.448.141	November 21, 1990

Complainant has expended significant resources in advertisement and promotion of the ARROW mark in connection with its products and services offered throughout the world. Complainant has spent more than $22.5 million the past five years in the United States alone. Complainant has approximately $10 billion each year in sales of products and services advertised under the ARROW mark.

Complainant holds the registrations of the <arrow.com> and <arrowasia.com> domain names.

Respondent registered the <arrow.biz> domain name on March 27, 2002 and uses the disputed domain name to divert Internet users to <vitty.com>, where Respondent offers electronic and computer components. Complainant’s investigation of Respondent and Respondent’s products indicates that the products marketed under the <arrow.biz> domain name “have never had the mark or symbol of ‘Arrow.’” Instead, Respondent’s products use the name VITTY.

Complainant’s examination of Respondent’s activities reveals that Respondent has been involved in numerous domain name disputes (e.g., Matrix Res. v. Vitty, Inc., DBIZ2002-00246 (WIPO Aug. 19, 2002); Dolby Labs. Licensing Corp. v. Vitty, Inc., DBIZ2002-00248 (WIPO Aug. 14, 2002); and MJM Ent’m, Inc. v. Vitty, Inc., FA 110853 (Nat. Arb. Forum July 8, 2002)). As found by the panels in the aforementioned decisions, Respondent has registered over 265 “.biz” domain names, many of which incorporate third parties’ trademarks.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complainant 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.”

Paragraph 4(a) of the UDRP 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 the Complainant has rights;

(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.

Paragraph 4(b) of the RDRP defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(1) to exchange goods, services, or property of any kind; or

(2) in the ordinary course of trade or business; or

(3) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Identical and/or Confusingly Similar UDRP ¶ 4(a)(i)

The Panel will first address Complainant’s UDRP arguments. 

Complainant has established rights in the ARROW mark through its registration of the mark with various international trademark authorities and continuous use of the mark in commerce for the past 60 years.

Respondent’s <arrow.biz> domain name is identical to Complainant’s ARROW mark. Respondent’s second-level domain fails to deviate in any respect from Complainant’s mark. The addition of a top-level domain (such as “.biz”) is inconsequential when conducting an analysis under UDRP ¶ 4(a)(i) because a top-level domain is a required element in a domain name. See 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 Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” top-level domain in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).

Accordingly, UDRP ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests UDRP ¶ 4(a)(ii)

Complainant’s submission to the Panel intimates that Respondent does not have any rights or legitimate interests in the <arrow.biz> domain name. Because Respondent has failed to submit a Response, Complainant’s assertions are unopposed and the Panel is permitted to accept all reasonable inferences contained in the Complaint as true. 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).

Additionally, because Complainant has provided proof of valid, subsisting rights in a mark that is identical to the domain name in question and alleged that Respondent lacks rights or legitimate interests in the domain name the burden shifts to Respondent. By failing to respond, Respondent has consequently failed to assert any circumstances that could substantiate its rights or interests in the subject domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

As detailed in the Findings, Respondent is using the disputed domain name to divert Internet users to its <vitty.com> website, where Respondent sells various electronic and computer-related goods. Respondent opportunistically uses Complainant’s ARROW mark to generate interest in its <vitty.com> domain name and corresponding website. Such commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use under UDRP ¶¶ 4(c)(i) or (iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks its use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent is making unauthorized use of the <arrow.biz> domain name, absent any licensing agreement or consent by Complainant. No information before the Panel suggests that a legitimate connection exists between Respondent and the infringing domain name. Complainant’s uncontested evidence indicates that Respondent has not acquired any trademark or service mark rights in an ARROW mark, or any variation thereof. Moreover, Respondent’s habitual registration of infringing domain names makes it unlikely that Respondent could establish rights in <arrow.biz> under UDRP ¶ 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 Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

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

Registration and Use in Bad Faith UDRP ¶ 4(a)(iii)

           

            Respondent’s bad faith registration and use is articulated under UDRP ¶ 4(b)(iii).

As stated, Respondent offers electronic and computer components, and therefore competes with Complainant for the same customers. Respondent has no apparent interest in the infringing domain name except to divert potential customers of Complainant to its competing website located at <vitty.com>. Such disruptive use fulfills the bad faith requirements presented by the Policy. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

As determined in the UDRP ¶ 4(a)(i) analysis, Respondent’s domain name is identical to Complainant’s ARROW mark. Complainant’s uncontested evidence indicates that Respondent has habitually registered domain names that infringe on third parties’ trademarks. Previous panels have concluded that Respondent has registered over 265 “.biz” domain names, many of which incorporate others’ marks. Respondent’s pattern of incorporating marks into domain names gives rise to an inference of bad faith registration and use pursuant to UDRP ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where Respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

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

Bona Fide Business or Commercial Use RDRP paragraph 4(b)

           

Complainant has established a sufficient prima facie case under the UDRP; therefore, the Panel concludes that the subject dispute is resolved. Because the UDRP analysis is dispositive, there is no need to further analyze the case under the RDRP.

DECISION

Having established all three elements required under ICANN Policy and enunciated in the UDRP, the Panel concludes that relief shall be GRANTED.

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

 

James P. Buchele, Panelist

Dated: February 18, 2003

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