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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avnet, Inc. v. SS
Case No. D2001-0793
1. The Parties
The Complainant is Avnet, Inc. of 2211 South 47th Street, Phoenix, Arizona 85034, United States of America, represented by J. Kevin Gray, Esq., of Jenkins & Gilchrist, P.C. of Dallas, Texas, United States of America.
The Respondent is SS of 300-5 Yooljun-Dong, Jangan-Gu, Suwon, Kyongki-do 440-320, Republic of Korea.
2. The Domain Names and Registrar
This dispute concerns the domain names <avnetkent.com> and <avnet-kent.com>.
The Registrar is Network Solutions, Inc., of Herndon, Virginia, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on June 14, 2001, and in hardcopy on June 27, 2001. The Complaint was acknowledged on June 18, 2001. The following day, registration details were sought from the Registrar. On June 22, 2001, the Registrar confirmed that the disputed domain names are registered in the name of the Respondent, whose address is as set out above and whose administrative and billing contacts are recorded as Ko, Youngho at the same address and having the fax number 123 123 1234. The Registrar’s Service Agreement Version 5 (which incorporates the Policy) is in effect.
On June 29, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements (including payment of the prescribed fee) and formally dispatched a copy of the Complaint to the Respondent, "Attn: Ko, Youngho" by post/courier and dispatched a letter by email (Complaint without attachments) to notify the Respondent of the commencement of this administrative proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was July 18, 2001. No Response was received. On July 19, 2001, the Center notified the Respondent of its default.
On August 2, 2001, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of August 16, 2001.
The language of the proceeding was English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed and the administrative panel was properly constituted.
4. Factual Background (uncontested facts)
The Complainant is a Fortune® 300 Company with over $12 billion (USD) in annual sales in approximately sixty countries worldwide. Since at least 1955, it has been in the business of offering a full range of warehouse storage and packaging goods, assembly and delivery of electronics, electrical and computer equipment and components, and advisory, consulting and distribution services in the field of electronics, electrical equipment and computers and computer components. It offers these goods and services by a variety of means, including web sites such as <avnet.com>.
On June 8, 2001, the Complainant acquired Kent Electronics Corporation of Houston, Texas, USA, which has been engaged in electronics distribution services since at least 1972.
The Complainant owns over 150 domestic and foreign trademark and service mark registrations for AVNET and marks including AVNET, including U.S. Trademark Registration No. 1,481,121 and U.S. Service Mark Registration No. 2,237,995, both for the mark AVNET and both registered in 1988.
Through its acquisition of Kent Electronics Corporation, the Complainant is the owner of U.S. Service Mark Registration Nos. 1,395,309 for the mark "KENT ELECTRONICS & Design," registered in 1986 and 2,377,392 for the mark "KENT ELECTRONICS," registered on August 15, 2000.
The Complainant owns numerous domain names including <avnet.com>, registered on May 22, 1990, <kentelectronics.com> registered August 8, 1998, and the domain names <askavnet.com>, <askavnet.org>, <askavnet.net>, <avnet-design.com>, <avnet-design.net>, <avnet-design.org>, <avnet-direct.com>, <avnet-direct.net>, <avnet-direct.org>, <avnet-es.com>, <avnet-es.net>, <avnet-es.org>, <avnet-express.com>, <avnet-express.net>, <avnet-express.org>, <avnet1.com>, <avnet1.org>, and <avnet1.net>.
On March 22, 2001, Complainant issued a press release announcing its intention to acquire Kent Electronics Corporation.
The Respondent registered the disputed domain names on the same day.
On May 15, 2001, the Complainants attorneys requested the Respondent to cease and desist from using the disputed domain names. On May 22, 2001, the Complainant’s attorneys emailed to the Respondent a Korean translation of that request. On June 2, 2001, the Respondent replied by email:
"Dear Sir or Madam I received your letter yesterday. Don’t push me with laws and rules. I didn’t register the domains in bad faith. I don’t sell the domains. I don’t use the domains for money. I registered the domains on register-first, pay-later service (domainvalet.com) I didn’t pay the money yet. So I am not the real owner. If I don’t pay the money, the domains will be deleted 5-6 month later. At that time, many-many people all over the world will target the domains. Thank you."
In addition to the registration of the disputed domain names on the same date as the Complainant’s press release regarding possible acquisition of Kent Electronics, the Respondent "SS" at the address set out above is also the registrant for other domain names associated with similar announced transactions, as follows:
- <kellogg-keebler.com> and <kelloggkeebler.com> (registered on March 26, 2001; Kelloggs Corp. press release dated March 26, 2001);
- <aesipalco.com> and <aes-ipalco.com> (registered on March 23, 2001; Business Wire announcing SEC approval of AES/IPALCO transaction issued March 23, 2001);
- <echostar-directv.com> and <echostardirectv.com> (registered on March 21, 2001; article in <CBS MarketWatch.com> on EchoStar’s advances toward acquiring DirecTV on March 21, 2001);
- <interpublic-truenorth.com> and <interpublictruenorth.com> (registered on March 19, 2001; press release of March 19, 2001, by The Interpublic Group of Companies, Inc. regarding agreement to acquire True North);
- <saptoptier.com> and <sap-toptier.com> (registered on March 30, 2001; article regarding acquisition of TopTier Software Inc. by SAP AG appearing in InternetNews on March 30, 2001);
- <tetrasidel.com> and <tetra-sidel.com> (registered on March 27, 2001; Tetra Laval’s press release on March 27, 2001, announcing Tetra Laval’s intention to make a public offer for Sidel);
- <wind-infostrada.com> and <windinfostrada.com> (registered on March 16, 2001; article appearing in GSMBox, Mobile News, on October 12, 2000, regarding upcoming merger between Wind and Infostrada); and
- <entergy-fpl.com> and <entergyfpl.com> (registered on March 19, 2001; article announcing merger agreement of FPL and Entergy appearing in FPL News on July 31, 2000).
5. Parties’ Contentions
The disputed domain names are clearly confusingly similar to the Complainant’s marks. They include the Complainant’s federally registered mark AVNET and the dominant portion of its federally registered mark KENT ELECTRONICS, as well as fully incorporating the Complainant’s common law mark AVNET KENT.
The Respondent has no rights or legitimate interest in the disputed domain names for at least the following reasons: (i) the Respondent has not used or prepared to use them in connection with a bona fide offering of goods or services; and (ii) the Complainant believes that the Respondent is not an actual entity with a legitimate prior interest in the disputed domain names.
The disputed domain names should be considered as having been registered and used in bad faith for at least the following reasons:
(1) they were registered on the very same day that Complainant issued its formal press release regarding its acquisition of Kent Electronics Corporation in an effort to defraud the Complainant of its ability to use its combined trademarks and service marks in a domain name(s).
(2) not only has the Respondent no legitimate business interest in the domain names, but the Respondent has made it a practice to register domain names comprising the trademarks, trade names, and/or service marks of companies as soon as a public announcement of an acquisition or merger involving such companies is released.
Complainant recognizes that the mere registration of multiple domain names does not necessarily indicate a pattern of bad faith on the part of a registrant. However, the Panel in Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton (WIPO Case No. D2000-0056) held that the registration of just three domain names, all incorporating third party marks, was a "sufficient basis for the inference to be drawn that a pattern of conduct exists."
A search by Network Solutions, Inc. revealed that "SS" is the registrant for at least 50 domain names. Therefore, by registering the disputed domain names and the others mentioned above, the Respondent has acted in bad faith by establishing a pattern of registering domain names in order to prevent owners of established trademarks or service marks who are in the process of acquisition or merger from reflecting the marks of the combined businesses in a corresponding domain name. Indeed, the U.S. Court of Appeals for the First Circuit recently held that a registrant’s ownership of numerous domain names similar to famous trademarks suggested bad faith under the U.S. Anticybersquatting Consumer Protection Act: Northern Light Technology Inc. v. Northern Lights Club, No. 00-1641.
The use of an intermediary (Domain Valet) is an attempt to avoid liability for the registrations. In the email of June 2, 2001, the Respondent acknowledges registering the disputed domain names but claims that because it hasn’t paid the intermediary yet, it is not their "real owner". This attempt to mask true ownership, done intentionally and with forethought, is evidence of the Respondent’s bad faith in registering the disputed domain names.
The email of June 2, 2001, contains an implicit threat that the Respondent will hold the domains hostage for five to six months. This is further evidence of the Respondent’s bad faith in registering them. By the statement that "many-many people all over the world will target the domains" (emphasis added), the Respondent actually admits it has "targeted" the Complainant by registering the disputed domain names as soon as the Respondent learned of the proposed acquisition by the Complainant of Kent Electronics Corporation, and that the Respondent has no legitimate business interest in these domain names.
The Respondent’s failure to provide a proper organization name when registering the disputed domain names and the inclusion of a false fax number also evidence the Respondent’s bad faith. There is no business entity called "SS". The Respondent used these letters simply because the registration process for Network Solutions, Inc. (and Domain Valet) requires that an organization name be entered or a domain name will not be accepted for registration. The Respondent simply used the letters "SS" so that the domain name registration process would not reject the Respondent’s entries. The fax number provided by the Respondent ("123 123-1234") is not a working fax number. The Respondent knowingly provided false information. When the Complainant attempted to fax the Respondent at the indicated fax number, the Complainant was unable to complete the fax transmission. On-line research revealed that "123" is not a working area code. By its use of false information in the domain name registrations, the Respondent acted in bad faith.
No Response was filed.
6. Discussion and Findings
The Panel draws two inferences where a Respondent has failed to submit a Response: (a) the Respondent does not deny the facts which the Complainant asserts; and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441).
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004) and Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0491).
The disputed domain names are clearly confusingly similar to the Complainant’s marks. They include the Complainant’s registered mark AVNET and the dominant portion of its registered mark KENT ELECTRONICS.
The Complainant has established this element.
The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain names. The name of the Respondent is not and does not include any part of any of the disputed domain names. The disputed domain names are not being used in connection with a bona fide offering of goods or services. The Respondent has made no attempt to demonstrate any of the circumstances specified in paragraph 4(c) of the Policy and the name "SS" given as the name of the Respondent, together with the false fax number, indicate that the Respondent is not an actual entity with a legitimate prior interest in the disputed domain names.
Under these circumstances the panel is satisfied that the Complainant has established that the Respondent has no right to or interest in the disputed domain names.
Bad faith registration and use
As in the similar case of A.P. Møller v. Web Society (WIPO Case No. D2000-0135) it is inconceivable that the Respondent registered the disputed domain names without knowledge of the announced acquisition of Kent Electronics Corporation by the Complainant and in anticipation that the Complainant might wish to combine in a domain name the trademarks AVNET and KENT ELECTRONICS. The only conceivable purpose must have been to prevent the Complainant from doing so. The pattern of similar conduct with respect to the trademarks of other entities involved in forthcoming mergers leads inescapably to the conclusion that the disputed domain names were registered in bad faith within paragraph 4(b)(ii) of the Policy, thereby evidencing both bad faith registration and bad faith use.
The Respondent registered the disputed domain names with false contact details, sought to argue that it was not the true owner because it had not paid the intermediary for arranging the registrations and threatened to hold the disputed domain names hostage until they became "targeted" once released for non-payment of the registration fee. The ‘use’ requirement has been found not to require positive action, inaction being within the concept: see Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO Case No. D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468). Accordingly, these circumstances establish both bad faith registration and bad faith use, the circumstances set out in paragraph 4(b) of the Policy not being exhaustive.
The Panel finds that the Complainant has established that the disputed domain names were registered and are being used in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain names <avnetkent.com> and <avnet-kent.com>be transferred to the Complainant.
Alan L. Limbury
Dated: August 12, 2001