DECISION

CompUSA Management Company v. Sound Computer Services and Gordy Ebner

Claim Number: FA0302000146229

PARTIES

Complainant is CompUSA Management Company, Dallas, TX (“Complainant”) represented by Lee Ann Wheelis Lockridge, of Thompson & Knight LLP.  Respondent is Gordy Ebner Sound Computer Services, Olympia, WA (“Respondent”) represented by Gordy Ebner, of Sound Computer Services.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <comp-u-s-a.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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

Estella S. Gold as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 19, 2003; the Forum received a hard copy of the Complaint on February 21, 2003.

On February 24, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <comp-u-s-a.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that the Respondent is the current registrant of the name.  Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.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 February 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 17, 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@comp-u-s-a.com by e-mail.

A timely Response was received and determined to be complete on March 17, 2003.

A timely Additional Submission was received on March 24, 2003 from Complainant.

On March 26, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant or its predecessor in interest has registered numerous trademarks on the Principal Register with the United States Patent and Trademark Office (“USPTO”), including the COMPUSA mark, registration number 1,735,429, registered on November 24, 1992, identifying goods and services as being related to retail store services and wholesale distributor services in the field of computers, computer products, and computer accessories.  Complainant shows evidence that it has used and advertised its COMPUSA marks extensively throughout the world for more than 20 years, and now spends millions of dollars each year advertising its services and products sold under the COMPUSA mark.

2. Complainant claims that the <comp-u-s-a.com> domain name is confusingly similar to Complainant’s COMPUSA mark because the disputed domain name incorporates Complainant’s entire mark and simply adds three hyphens as punctuation.  Complainant asserts that Respondent has no rights or legitimate interests in the <comp-u-s-a.com> domain name.  Complainant alleges that Respondent is attempting to use a variation of Complainant’s marks to divert Complainant’s customers to Respondent’s website, in direct competition with Complainant’s sale of computer products.

3. Complainant asserts that Respondent has no legitimate interest or rights in the <comp-u-s-a.com> domain name. 

B. Respondent

1. Respondent contends that the <comp-u-s-a.com> domain name is not confusingly similar to Complainant’s COMPUSA mark because Respondent has three hyphens in its domain name that do not appear in Complainant’s mark.  Respondent asserts that it is unlikely that Internet users, in an attempt to locate Complainant’s website, will accidentally insert three hyphens and be diverted to Respondent’s disputed domain name, creating initial interest confusion.

2. Respondent submits that its registration and use of the disputed domain name was not done in bad faith, but, rather, use of the disputed domain name was part of a larger business plan of Sound Computer Services.  Respondent asserts that there was no bad faith in the registration of that domain name. 

C. Additional Submissions

The additional submissions supplied by Complainant and received March 24, 2003, were considered in reaching this Decision.

FINDINGS

The following facts are undisputed:

(a) Complainant has current registration in the Principal Register at the USPTO for COMPUSA and numerous variations.

(b) Complainant has used its mark in commerce for at least twenty years, and spent substantial sums of money in the marketing of its mark in the field of computer sales and services.

(c) Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks.

(d) Respondent is not commonly known by the disputed domain name.

ADDITIONAL FINDINGS

(a) There is a competitive relationship between Complainant and Respondent, in that they are in similar commercial endeavors.

(b) Use of hyphens does not adequately distinguish Respondent’s domain name from Complainant’s registered trademark, thereby creating a confusing similarity.

(c) Respondent has intentionally attempted to attract Internet users with its domain name by creating a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

The <comp-u-s-a.com> domain name is confusingly similar to Complainant’s COMPUSA mark because the disputed domain name incorporates the Complainant’s entire mark and simply adds three hyphens.  The addition of hyphens does not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark in order for the domain name to survive a confusing similarity challenge pursuant to Policy ¶ 4(a)(i). See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different from the trade mark COLUMBIA SPORTSWEAR COMPANY”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’s mark).

Rights or Legitimate Interests

The Complainant alleges that Respondent is attempting to use a variation of Complainant’s registered mark to divert Complainant’s customers to Respondent’s website.  Respondent’s use of the disputed domain name to divert Complainant’s customers from accessing Complainant’s website is neither a bonafide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name).

The Panel finds that Respondent’s use of  a confusingly similar domain name to Complainant’s mark in order to compete with the Complainant is not a bonafide offering of goods and services pursuant to Policy ¶ 4(c)(iii), nor a legitimate, non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

The Panel finds that the Respondent is not commonly known by either COMP-U-S-A or <comp-u-s-a.com> because “COMP-U-S-A” appears only once on Respondent’s website as the name of a “division” of Sound Computer Services, and furthermore, does not appear in the WHOIS information for the domain name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Registration and Use in Bad Faith

As a direct competitor with the Complainant, offering sales and service of computer goods, the Panel finds that Respondent’s registration and use of the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic website).  The Panel finds that Respondent is intentionally attempting to attract Internet users to the <comp-u-s-a.com> domain name by creating a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain, which is evidence of bad faith registration and use pursuant to Policy 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

DECISION

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

Accordingly, it is Ordered that the <comp-u-s-a.com> domain name be TRANSFERRED from Respondent to Complainant.

Estella S. Gold, Panelist
Dated: April 3, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/326.html