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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fry’s Electronics, Inc v. Whois ID Theft Protection

Case No. D2006-1435

 

1. The Parties

The Complainant is Fry’s Electronics, Inc, San Jose, California, United States of America, represented by Foley McIntosh Frey & Claytor, United States of America.

The Respondent is Whois ID Theft Protection, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <fryelectronic.com> is registered with Dotster, Inc..

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2006. On November 10, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name(s) at issue. On November 13, 2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2006.

The Center appointed Luca Barbero as the sole panelist in this matter on January 15, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the owner, amongst others, of the trademarks registrations FRY’S ELECTRONICS (stylized mark) n. 2031351 filed on October 29, 1983, and registered on January 21, 1997, in the United States of America in class 9 for electronic components and supplies and in class 42 for services related to electrical and electronic components and FRY’S (word mark) n. 2102637 filed on December 11, 1995, and registered on October 7, 1997 in the United States of America for electronic components and supplies and in class 42 for services related to electrical and electronic components.

The Respondent registered the domain name <fryelectronic.com> on May 14, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant indicates that the name FRY’S ELECTRONICS was adopted as a corporate and trade name on March 18, 1985, and has been continuously used thereafter. The Complainant states that it enjoys an excellent reputation and that it has built up valuable goodwill.

The Complainant owns the trademark FRY’S ELECTRONICS n. 2031351 filed on October 29, 1983, and registered on January 21, 1997, in the United States of America and the trademark FRY’S n. 2102637 filed on December 11, 1995, and registered on October 7, 1997, in the United States of America, and provided the Panel with evidence of the trademark registrations.

The Complainant contends that disputed domain name <fryelectronic.com> is nearly identical and/or confusingly similar to trademarks, trade names and domain names in which Complainant has rights.

The Complainant further contends that there exists a strong possibility of confusion particularly since the Respondent’s website offers electronic goods for sale.

The Complainant states that the trademarks FRY’S and FRY’S ELECTRONICS are well-known and have acquired secondary meaning.

The Complainant contends that internet users looking for the Complainant are diverted to Respondent’s website.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain name is used for commercial gain.

The Complainant emphasizes that customers may be confused about whether Respondent’s website is in fact the Complainant’s website. Customers may also believe that the Respondent’s website is sponsored by, affiliated, or endorsed by the Complainant.

The Complainant underlines that the Respondent is unlawfully using the disputed domain name to lure customers to its website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore, the Panel shall decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain name has been registered and is being used in bad faith.

A. Domain Name is Identical or Confusingly Similar

The Complainant has provided evidence of ownership of two trademark registrations: FRY’S ELECTRONICS (stylized mark) n. 2031351 filed on October 29, 1983, and registered on January 21, 1997, in the United States of America in class 9 for electronic components and supplies and in class 42 for services related to electrical and electronic components and FRY’S (word mark) n.2102637 filed on December  11, 1995, and registered on October 7, 1997, in the United States of America for electronic components and supplies and in class 42 for services related to electrical and electronic components.

In comparing the Complainant’s marks to the Domain Name with reference to fryelectronic.com it should be taken into account the well established principle that the suffixes, including the country code top level domains, must be excluded from consideration as being merely a functional component of the domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific 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”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “The accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”) and Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033 “The domain name <maserati.org> is not only confusingly similar to, but indeed practically identical with, the registered trademark MASERATI, notwithstanding the added gTLD .org”.

The Panel finds that the disputed Domain Name is confusingly similar to the registered trademark FRY’S ELECTRONICS owned by the Complainant since the Respondent has merely eliminated two letters “s” from the trademark which is certainly not sufficient to exclude the confusingly similarity. In ACCOR v. I&M Raamatupidamise O/Accora Consult OЬ (WIPO Case No. D2006-0650), the Panel stated “The domain name at issue reproduces entirely the mark ACCOR with the mere addition of the single letter “a” which moreover makes no difference with the Complainant’s trademarks and may also be interpreted to be a misspelled suffix of ACCOR. Indeed the single letter “a” is an obvious attempt to “typosquat” the disputed domain name and is insufficient to avoid confusion.”

The same reasoning was adopted in VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240 where the “deletion of letter ‘s’ in domain name <superclubbreeze.com> was found not to alter the confusing similarity between the domain name and complainant’s marks SUPERCLUBS BREEZES, in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services, WIPO Case No. D2003-0841 where the “deletion of the letter ‘s’ in domain name <hersheychocolateworld.com> confusingly similar to complainant’s <hersheyschocolateworld.com> domain name” and in Pop Smear, Inc. v. Craig Singer, NAF Case No. FA0006000094945 (deletion of single letter “s” from complainant’s registered mark 1800POSTCARDS.COM creates a confusingly similar domain name).

Likewise, the Complainant’s trademark FRY’S and the disputed domain name <fryelectronic.com> are confusingly similar since the deletion of the single letter “s” and the addition of the descriptive term “electronic” are not sufficient to eliminate confusion, particularly considering that “electronic” simply describes the services that Complainant provides in connection with its FRY’S Mark. As stated in Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 the domain name <reutersnews.com> is confusingly similar to complainant’s trademark REUTERS where the term “news” is indicative of the complainant’s business of providing news services.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical / confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that the Complainant shows prima facie evidence in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581).

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks and name under any circumstance. See, e.g., Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299, concluding that the respondent had no rights or legitimate interest in <nilfisk.net> because the respondent is not an authorized agent or licensee of complainant, Guerlain S.A. v. SL Blancel Web, WIPO Case No. D2000-1191, noting that lack of authorization or license to use complainant’s marks contributed to a finding that complainant established prima facie evidence that respondent had no legitimate rights in <missguerlain.com>.

Furthermore, there is no indication that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services and/or that it intends to make a legitimate, non-commercial or fair use of the domain name.

The disputed domain name points to a sponsored web site aimed only at directing visitors to various third party commercial websites.

The Panel finds that such use does not constitute a bona fide offering of goods or services or a legitimate, non-commercial use of the Domain Name under the Policy as indicated inter alia in a number of other cases decided against the same respondent (Industrial Products Limited v. Whois ID Theft Protection, NAF Case No. 726075, Cass Street Publishers, Inc. v. Whois ID Theft Protection, NAF Case No. 803254, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581, Wind-lock Corporation v. Whois ID Theft Protection, NAF Case No. 767125).

Also in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146, the Panel stated that “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”

Along the same lines is the decision in Fifth Third Bancorp v. Whois ID Theft Protection, WIPO Case No. D2006-1209, finding that there is a strong prima facie case that the Respondent has no right or legitimate interests in the use of the disputed domain name since “in this case the Complainant has strong and longstanding goodwill in its marks, the similarity of the disputed domain name and the marks is considerable, and the domain name is being used to provide competing services in the same market sector as that in which the Complainant operates by exploiting the potential confusion created by the similarity of the marks”.

Moreover the Panel finds that the Respondent, whose true identity is obscured by the privacy shield, has not shown that it is commonly known by the disputed domain name. As stated in Harrah’s License company, LLC v. WHOIS IF Theft Protection (NAF Case No. 797840), “Respondent cannot be commonly known by the disputed domain name pursuant to Policy 4(c)(ii). The Panel wishes to emphasize that the use of identity protection services does not, as a Rule, prevent a respondent from being commonly known by the subject domain name. Rather, Policy 4(a)(ii) requires a showing that Respondent is commonly known by the domain name in question. Here, Respondent has failed to come forward with evidence that suggests that it is commonly known by the disputed domain name.”

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

With reference to the issue of bad faith at the time of the registration, the Panel concludes that in light of the confusing similarity between the Complainant’s trademark and the Domain Name, the Respondent’s apparent pattern of registering infringing domain names, and the absence of any explanation from the Respondent on the rationale of the registration, that the Respondent was aware of the existence of the trademarks FRY’S and FRY’S ELECTRONICS at the time of the registration of <fryelectronic.com> .

In accordance with a number of prior decisions issued under the Policy, the Panel agrees that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith. See, e.g., Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, Societй des Produits Nestlй, S.A. v. Whois ID Theft Protection, WIPO Case No. D2006-1154.

In light of the numerous prior decisions all rendered in default against the same Respondent (as indicated by an identical PO Box address on Grand Cayman), the Panel infers that it may well be that the Respondent is not hiding any other domain name holder behind the words “Whois ID Theft Protection” but simply directly using such a name for its abusive domain name registration. The Panel finds paragraph 4(b)(ii) applicable in this case since the Respondent has apparently registered the domain name in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has also registered other domain names incorporating registered trademarks that have been subject of many proceedings under the Policy.

The Panel concurs with the views expressed in the Hartz Mountain Corporation v. Whois ID Theft Protection, WIPO Case No. D2006-1319 where the panel with regard to this same Respondent stated that “the Respondent has engaged in a pattern of ‘cybersquatting’ before, as evidenced by the cases of Industrial Products Limited v. Whois ID Theft Protection c/o Domain Admin, NAF Case No.726075 (transfer of the domain name <industrialproducts.com> to the Complainant) and Wind-lock Corporation v. Whois ID Theft Protection, NAF Case No. 767125 (transfer of the domain name <windlock.com> to the Complainant) (…) bad faith is supported by the Respondent’s prior practice of registering other domain names in a like manner”.

The Domain Name was at the time of the filing of the Complaint - and still is at the time of the drafting the present decision - pointing to a pay per click sponsored website with a number of links related to computers and electronic products (such as “Laptop Computers”, “Cell Phones”, “Television”, “Plasma TV”, “Mp3 Player” etc., which are corresponding to the main products and services sold by the Complainant. Therefore, the Panel finds that consumers are likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website and that the Respondent apparently profits from such confusion by earning pay per click revenue (Harrah’s License company, LLC v. WHOIS IF Theft Protection, NAF Case No. 797840, Industrial Products Limited v. Whois ID Theft Protection c/o Domain Admin, NAF Case No.726075, Cass Street Publishers, Inc. v. Whois ID Theft Protection, NAF Case No. 803254).

As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

Similarly, the Panel finds paragraph 4(b)(iv) of the Policy to be also applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <fryelectronic.com> be transferred to the Complainant.

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Luca Barbero
Sole Panelist

Dated: January 29, 2007