ABC Distributing, Inc. v. Alex Fedorov
[Indexed as: ABC Distributing v. Fedorov]
[Indexed as WWWABCDISTRIBUTING.COM]
National Arbitration Forum
Case No. FA0003000094787
Commenced: 8 May 2000
Judgment: 12 June 2000
Arbitrator: John J. Upchurch
Domain Name - Domain Name Dispute Resolution Policy - Registered Trademark - Identical - Confusingly Similar - Diversion of Traffic - Reputation - Goodwill - Bad faith registration - Bad faith use - Typographical error.
Complainant is the owner of a number of registered marks containing either ABC DISTRIBUTING or ABC, and since July 1997, has sold general merchandise through its web site ABCDISTRIBUTING.COM. On 14 December 1999, Respondent registered the domain name WWWABCDISTRIBUTING.COM, which leads through a series of sexually-orientated web sites.
Complainant alleges that by registering WWWABCDISTRIBUTING.COM, Respondent is attempting to misleadingly divert web users who make a typographical error while trying to locate Complainant's website.
Held, Name Transferred to Complainant.
The domain name selected by Respondent is nearly identical and confusingly similar to Complainant's registered trademark - in fact, it completely subsumes Complainant's mark. Respondent is attempting to benefit from the possibility of a typographical error on the part of potential customers of Complainant. Respondent is not commonly known by the name WWWABCDISTRIBUTING.COM and has no rights or legitimate interests with respect to that domain name. The domain name was registered and is being used in bad faith by Respondent to the detriment of Complainant and is likely to tarnish the reputation and goodwill associated with Complainant's mark.
Policies referred to:
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Upchurch, Arbitrator: -
The above entitled matter came on for an administrative hearing on June 12, 2000, before the undersigned arbitrator on the Complaint of ABC DISTRIBUTING, INC., ("Complainant") represented by David C. Gryce, Esquire, of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Ave., NW, Washington, DC, 20036, against ALEX FEDOROV ("Respondent"). Upon the written submitted record including the Complaint, the following DECISION is rendered:
Domain Name: WWWABCDISTRIBUTING.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Alex Fedorov
Date of Domain Name Registration: December 14, 1999
Date Complaint Filed: May 8, 2000
After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent in compliance with Rule 2(a) of ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. An administrative panel was selected in accordance with the Rule, and the Complaint was docketed and forwarded to the arbitrator for decision on June 2, 2000.
FINDINGS OF FACT AND CONCLUSIONS
1. Since 1955, Complainant ABC DISTRIBUTING, INC., has sold general merchandise through catalog and mail order sales services under the service marks ABC and ABC DISTRIBUTING, INC., and since July 1997, has sold this merchandise over the internet at its website ABCDISTRIBUTING.COM.
2. ABC is the owner of a number of federally registered marks containing either ABC DISTRIBUTING or ABC.
3. Since July 1997, ABC has operated a website under the domain name ABCDISTRIBUTING.COM. This website is very active, receiving approximately 6.6 million hits per day, and has become a very popular site for people shopping for the type of merchandise ABC sells at its website.
4. On December 14, 1999, the domain name registrant, Alex Federov, registered the domain name WWWABCDISTRIBUTING.COM.
5. ABC has made significant sales of goods under its ABC DISTRIBUTING marks since long prior to Respondent Federov's registration of WWWABCDISTRIBUTING.COM. ABC has sold goods under its ABC DISTRIBUTING marks via the internet through computer on-line sales at its website since long prior to Federov's registration of his domain name WWWABCDISTRIBUTING.COM.
6. The domain name selected by Federov, WWWABCDISTRIBUTING.COM, is nearly identical and confusingly similar to ABC's service mark, ABC DISTRIBUTING, INC.
7. Respondent registered a domain name that completely subsumed the domain name of ABC and relies upon the inadvertent typographical error of omitting the periods between WWW and ABCDISTRIBUTING.COM to garner traffic at his site.
8. Once one falls prey to the typographical error, one is unable to escape Respondent's series of sexually oriented website(s) and pages through the basic operation of the "OK", "Cancel," "Back" and "Forward" buttons.
9. Respondent, by using the subject domain name, has intentionally attempted to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with Complainant's marks and domain name as to the source, sponsorship, affiliation, or endorsement of the website.
10. Respondent cannot, in good faith, claim that he has made a legitimate, non-commercial, fair use of the domain name; or that he is commonly known by the name WWWABCDISTRIBUTING.COM.
11. Respondent has no rights or legitimate interests with the respect to the subject domain name.
12. Respondent's registration of WWWABCDISTRIBUTING.COM is likely to tarnish and disparage the reputation and goodwill associated with Complainant's marks and domain name and be dilutive of the Mark by frustrating web users trying to locate the Complainant's website, WWW.ABCDISTRIBUTING.COM.
Accordingly, I find, as a matter of law, that Respondent's registration and use of the domain name WWWABCDISTRIBUTING.COM was in bad faith. Further, in accordance with the above findings, it is hereby determined that the domain name WWWABCDISTRIBUTING.COM be transferred to the Complainant, ABC DISTRIBUTING, INC.
Signed this 12th day of June, 2000, by the duly selected undersigned Arbitrator,
Honorable John J. Upchurch.
Domain Name Transferred