WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fry's Electronics, Inc. v. Devin Lem Case No. D2008-1583 1. The Parties
The Complainant is Fry's Electronics Inc., of California, United States of America, represented by Foley McIntosh Frey & Claytor, of California, United States of America.
The Respondent is Devin Lem, of Guandong, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2008. On October 21, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 24, 2008 Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”or “UDRP”), 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 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 10, 2008. 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 retails computers, electronic components and related items nationally and abroad. It has 38 substantial retail stores in eight states of the United States of America. It also deals over the Internet through its website, “”.
The Complainant has traded as FRY'S ELECTRONICS, INC., or FRY'S since 1985 and adopted relevant trademarks at about that time. The Complainant has registered the trademarks FRY'S ELECTRONICS (No. 2,031,351, granted January 21, 1997) and FRY'S (No. 2,102,637, granted October 7, 1997) at the United States Patent and Trademark Office.
The Complainant has also registered several domain names including and .
No factual information is available about the Respondent other than the registration details of the disputed domain name.
The disputed domain name appears to have been registered on May 2, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that it is a substantial company with 38 retail outlets, and also conducts business over the Internet. Documentary evidence is submitted in support of its ownership of the registered trademarks listed above. The Complainant says that it has an excellent reputation and that its trademarks are well known and well advertised in newspapers, through sponsorship, and on radio and television. The Complainant's slogan “Your Best Buys are Always at Fry's, Guaranteed” is widely recognised by the public.
The Complainant contends that the disputed domain name is confusingly similar to the trademarks in which it has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence or reason to believe that the Respondent had made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or has commonly been known by the disputed domain name, or is making a legitimate noncommercial or fair use of it. The Complainant cites previous UDRP decisions that it submits should be treated as precedent in this respect.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, in particular within the meaning of paragraph 4(b)(iv) of the Policy. Some of the goods offered for sale from the Respondent's website “www.”, such as laptop computers, are the same as the Complainant sells. If a user clicks on the phrase “electronic store” on the Respondent's homepage, the name “Fry's Electronics Store” appears, being the Complainant's trademark. Thus, it is contended, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion as to the sponsorship, affiliation or endorsement of the Respondent's website. There is a likelihood of both initial interest confusion and permanent confusion.
The Complainant requests the Panel to award the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:
(i) your [the Respondent's] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant is required to prove that it has rights in a trademark to which it is asserted that the disputed domain name is confusingly similar. Satisfactory documentation has been submitted to the satisfaction of the Panel that the Complainant owns and has rights in the trademarks FRY'S and FRY'S ELECTRONICS.
The disputed domain name is . The generic top level domain “.net” is to be disregarded since it or an equivalent designation is inevitable in a domain name. Because spaces are not used in domain names, the hyphens may serve in this case as spaces. Upper and lower case are not distinguished in domain names, and apostrophes are not used. The disputed domain name therefore reads “frys electronics store”, which is indistinguishable from “Fry's Electronics Store” and incorporates the Complainant's trademarks FRY'S and FRY'S ELECTRONICS. On this ground there is confusing similarity, which is compounded by the descriptive word “store” because the Complainant is the proprietor of stores. The Panel finds confusing similarity in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. As the Complainant points out, this confronts it with the difficulty of proving a negative. The convention is for the Complainant to make the necessary enquiries and then to state a prima facie case.
The Complainant asserts that there cannot be any reason for the Respondent to have any rights or legitimate interests in the disputed domain name. In particular, and in anticipation of any possible defense by the Respondent in the terms of paragraph 4(c) of the Policy, there is no evidence that the Respondent had made preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or that he has been commonly known by the disputed domain name; or that he is making a legitimate noncommercial or fair use of the disputed domain name, since his use of it is both commercial and unfair.
The Panel accepts that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, that the Respondent has not contested. The Panel finds for the Complainant under this heading. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith. The last of these circumstances is especially relevant to the present case, and reads as follows:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Screenprints of the Respondent's website provided in the Complainant's evidence portray all of the markers of a well-known mode of activity, namely click-through or pay-per-click advertising. In principle, a website may host advertising links to other websites, in return for payment. Commonly payment is made according to the amount of traffic referred on to the advertiser, in other words, the number of users who click on a particular link and are connected to the advertiser's website.
The conduct of a pay-per-click operation may be entirely legitimate. Many such websites are operated mainly for profit, attracting viewers by means of some kind of content and relying on them to visit featured advertisers, often bookshops. Other websites may offer click-through advertising in order to subsidise a useful service such as news or weather.
An overview of the Respondent's website leads to the conclusion, on the balance of probabilities, that his business operation is the generation of click-through revenue, by attracting viewers in the expectation that a proportion of them will click on the advertising links offered. In order for this operation to succeed is it imperative for the Respondent to attract viewers in the first place. It may reasonably be concluded that he does so by having a domain name that some Internet users will search for, and that for this purpose he has chosen a version of the words “Fry's Electronics Store”. That name describes the Complainant and its business and embodies its registered trademarks, FRY'S and FRY'S ELECTRONICS. The words FRY'S ELECTRONICS, and more particularly with the additional word “store”, is so unusual in combination and in their particular relevance to the Complainant's business that it is difficult to escape the conclusion, on balance, that the Respondent knew of them and that his use of them in the disputed domain name was deliberate. By his actions the Respondent in this case is found to have been attracting Internet users by reliance on confusion between the Complainant's trademarks FRY'S or FRY'S ELECTRONICS and the disputed domain name , for commercial purposes within the contemplation of paragraph 4(b)(iv) of the Policy. As such, the Panel finds for the Complainant under this heading. 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 be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: December 24, 2008
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