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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABIT Computer Corporation v. Motherboard Super Store, Inc.
Case No. D2000-0399
1. The Parties
The Complainant is:
ABIT Computer Corporation of 3F-7, No. 79, Sec. 1, Hsin Tai Road, His Chi, Taipei Hsien, Taiwan, Republic of China
Tod L Gamlen and Keith L Wurster of Baker & McKenzie, 660 Hansen Way, Palo Alto, California, United States of America
The Respondent is:
Motherboard Super Store, Inc of 26 Center Avenue, Sulphur, Louisiana 70663, United States of America
Joe Mize of Robichaux, Mize & Wadsack, LLC of 901 Lakeshore Drive, Suite 900 PO Box Drawer 2065, Lake Charles, LA 70602-2065, United States of America
2. The Domain Name(s) and Registrar
The domain name with which this dispute is concerned is: "abit.com"
The Registrar with which the domain name is registered is:
Tuscows.Com Inc of 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 8 and May 10, 2000, respectively. Following an objection by Respondent Notice of Deficiency issued by WIPO Center on May 23, 2000, an Amended Complaint was submitted electronically and in hard copy on May 25 and May 29 respectively.
3.2 The Amended Complaint was communicated to Respondent on June 1, 2000, and the Administrative Proceeding commenced on that date.
3.3 On June 20, 2000, the Respondent filed its Response. The response was timely filed.
The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.
4. Factual Background
4.1 Complainant is a company resident in Taiwan and is a manufacturer and marketer of motherboards for computers.
4.2 Complainant is the registered owner of the following United States trademark registrations:
No. 1,709,239 "ABIT logo" Filed January 18, 1991
Registered August 18, 1992
No. 2,113,776 "ABIT logo" Filed August 12, 1996
Registered November 18, 1997
4.3 Complainant is the owner of several trademark registrations and applications in the United States of America, Canada, United Kingdom, Germany and the European Community for trade marks consisting of or including the word ABIT.
4.4 Complainant is the registrant of domain names "abit.com.tw" and "abit-usa.com"
5. Parties Contentions
5.1 Complainant contends that since 1990, it has used the name and trade mark ABIT in respect of motherboards and computer products and as a result its name and mark has become well known and recognized by purchasers. Since 1996, it has made direct sales of its motherboards to distributors in the United States and is now the number one seller in that country.
5.2 Complainant further asserts that:
(a) Respondent is not an authorized distributor of ABIT motherboards;
(b) Respondent therefore has no right or legitimate interest in using the name ABIT in the domain name or otherwise;
(c) the display of ABIT products or Respondent's "motherboards.com" web-site is causing confusion among customers and ABIT has lost business worth millions of dollars due to Respondent's unfair practices;
(d) Respondent's registration of the domain name was a deliberate attempt to attract Internet users to its web-site;
(e) Respondent's offer to establish a link from its web-site to Complainant's web-site in exchange for Complainant's agreement to seel direct to Respondent is evidence of bad faith;
(f) Respondent registered the domain name in a deliberate attempt to prevent Complainant and others from selling Complainant's motherboards via the Internet;
(g) Respondent's transfer in April 2000, of the domain name from a previous registrar to the present registrar is evidence of Respondent's bad faith attempts to avoid resolution of this dispute.
5.3 Respondent denies Complainant's further assertions and asserts that it has rights and legitimate interest in the domain name and did not register and has not used the domain name registration in bad faith. In support of its assertion disputes the facts alleged by Complainant and files an affidavit by Greg Ricks, owner of Respondent.
Respondent asserts that:
(a) Respondent has been selling computers and components including motherboards since 1996;
(b) from April 1997, till January 1998, Respondent purchased motherboards directly from Complainant and would have continued to do so if Complainant had not increased its prices to a level above those charged to other distributors;
(c) Respondent purchased from other ABIT distributors rather than direct from ABIT because it could do so at lower prices;
(d) Complainant has not lost sales and that its sales have increased due to Respondent's "motherboards.com" listing;
(e) Respondent has had conversations with officers of Complainant in which no objection has been raised by Complainant about Respondent's sale of ABIT motherboards and that such sales have been welcomed by Respondent.
(f) prior to Respondent's registration of the domain name in May 1997, Complainant had, in August 1996, registered its "abit-usa.com" domain name;
(g) its transfer of the domain name registration to the present registrar was due simply to the fact that the registration was due for renewal and that the charges made by the present registrar are significantly less than those of the previous registrar.
5.4 In support of its case Respondent cites the decision in Case No.
D2000–0187 (Weber-Stephen Products Co v. Armitage Hardware).
Conflict of Evidence
5.5 This is a matter in which there is a dispute between Complainants and Respondent in relation to material facts surrounding the registration of the domain name and communications between Respondent and Complainant regarding the name. As pointed out in Case No. D2000–0227 (Westfield Corporation v. Hobbs) there is no procedure provided by the Policy or the Rules for the formal taking of independent evidence, the examination of witnesses or the testing of credit. The Panel must therefore decide matters before it on the face of the record including the affidavit of Ricks.
6. Applicable Dispute
6.1 To succeed in their complaint, Complainants must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and used in bad faith.
Identical or Confusingly Similar Marks
6.2 Complainant asserts that the domain name is identical with or confusingly similar to one or more of the trademarks set out in paragraphs 4.2 and 4.3. The operative part of the domain name is the word ABIT. This is substantially identical with Complainant's name and trademark. The first requirement of paragraph 4(a) of the Policy is therefore satisfied.
Respondent's Rights or Legitimate Interests
6.3 Complainants assert that Respondent has no right or legitimate interest in the domain name. However Respondent has shown that:
(a) it is a retailer of computers and computer components including motherboards;
(b) It has since 1997, sold Complainant's ABIT motherboards; and
(c) it has done so with the knowledge and consent of Complainant.
Paragraph 4(c) of the Policy provides that Respondent's rights or legitimate interests in the domain name will be demonstrated by proof of:
"(i) before any notice to you of the dispute, your use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services"
The remarks of the majority in Case D2000 – 0187 are opposite:
"This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant's goods or services. It is apparent from the Respondent's web page that Respondent is selling Complainant's goods under Complainant's registered trademark. Although it appears that Respondent has also used its web page to sell (directly or indirectly) products other than Complainant's, these instances appear to be minor and Complainant has not controverted Respondent's alleged removal of these items. Complainant has failed to disprove that Respondent's use of the domain name in connection with Respondent's sales of Complainant's goods was made primarily in connection with the bona fide offering of goods or services."
The Panel finds that Respondent has demonstrated bona fide use of the domain name in the offering for sale by retail of Complainant's motherboards and that such use commenced prior to notice of the dispute.
6.4 Complainant has therefore failed to establish the element required by paragraph 4(a)(ii) of the Policy and the Complaint therefore fails. That being the case it is unnecessary to consider the element of bad faith required by paragraph 4(b)(iii). However for the sake of the record the Panel deals briefly with the issue below.
7. Use and Registration in Bad Faith
7.1 The Panel concludes that Complainant has failed to establish any of the grounds set out in paragraph 4(b) of the Policy or otherwise shown registration and use of the domain name in bad faith. Respondent's use of the domain name appears consistent with ordinary use by a retailer of a manufacturer's trademark in connection with the sale of that manufacturer's genuine goods.
8.1 The Complaint is dismissed and transfer of the domain name is refused.
Dated: August 8, 2000