WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fry's Electronics Inc. v. Haclav Vavel, Chen Fang Fang Case No. D2009-0677 1. The Parties
The Complainant is Fry's Electronics Inc. of San Jose, Santa Clara, California, United States of America represented by Foley McIntosh Frey & Claytor, United States of America.
The Respondents are Haclav Vavel of Fot'ata Island, Vavau, Tonga; and Chen Fang Fang of Shanghai, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2009. On May 25, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On June 3, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 17, 2009. The Center verified that the Complaint together with the amended 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 June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2009.
The Center appointed Adam Taylor as the sole panelist in this matter on July 17, 2009. 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 a United States (“US”) corporation. For more than twenty years, the Complainant has been engaged in a retail business offering for sale computers, electronic components and related items to customers in the United States and abroad under the names FRY'S and FRY'S ELECTRONICS. The Complainant owns and operates 38 retail stores located in eight states in the United States - California, Washington, Oregon, Arizona, Nevada, Texas, Georgia and Indiana. The Complainant also offers its goods for sale over the Internet through its website at “”.
The Complainant has promoted its marks through the use of newspaper advertising several times a week in every major newspaper in California and the other states in which its stores are located. The Complainant also sponsors a PGA golf tournament in Las Vegas, Nevada as well as radio and television advertising through California and the other states.
The Complainant owns US registered trademarks for FRY'S ELECTRONICS, Registration No. 2,031,351 registered January 21, 1997 and FRY'S, Registration No. 2,102,637 registered October 7, 1997.
The disputed domain name was registered on September 13, 2008.
As of May 20, 2009, there was a website at the disputed domain name comprising a parking page branded “F” with sponsored links to websites offering electronic products such as laptop computers and televisions.
As of May 20, 2009, the disputed domain name was registered in the name of “Chen Fang Fang” with an address in Shanghai. The Complaint was filed on May 23, 2009. By June 3, 2009, the registrant of the disputed domain name had been changed to “Haclav Vavel”. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant's has built up valuable goodwill in its marks. The Complainant's marks and its advertising phrase, “Your Best Buys are Always at Fry's, Guaranteed,” have become widely known among members of the public, identifying and distinguishing the Complainant's goods and services and have therefore acquired a secondary meaning.
The disputed domain name is confusingly similar to the Complainant's marks. Rights or Legitimate Interests
There is no evidence that the Respondents made preparations to use this domain name in connection with a bona fide offering for sale of goods prior to this dispute. Likewise, there has been and can be no showing that Respondents had commonly been known by this name as the database shows that it only recently registered the name.
The evidence establishes that the Respondents are using this domain name to misleadingly divert customers from the domain name that the Complainant has used for years. Therefore the Respondents are not making a “noncommercial or fair use” of the domain name. Registered and Used in Bad Faith
The Respondents have and continue to use the disputed domain name for commercial gain. Because of the near identity of this domain name with the Complainant's marks, and because the Respondents' site offers goods like those offered for sale by the Complainant (electronics), it must be concluded that the Respondents intentionally attempted to attract Internet users to its site by creating a likelihood of confusion as to the sponsorship affiliation or endorsement of Respondents' site, i.e., users may wrongfully assume that the Respondents' site is sponsored by, affiliated, or endorsed by the Complainant.
Moreover, where a complainant has, as the Complainant has here, a registered trademark under the laws of the United States registered years before the respondent registered its domain name, and the respondent is doing business in the United States, the later-in-time registrant is presumed to have notice of the trademark. There can therefore be no good faith basis for the respondent electing to register a domain name whose only purpose was to divert customers from the complainant. B. Respondent
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the marks FRY'S and FRY'S ELECTRONICS by virtue of its registered trade marks as well as its extensive trading activities under those marks.
The disputed domain is confusingly similar to the mark FRY'S ELECTRONICS. It differs only by changing “Fry's” to “Fry”. This slight variation is insufficient to distinguish the domain name and trademark. The disputed domain name still has the obvious potential to cause confusion with the Complainant's trade mark.
The disputed domain is also confusingly similar to the mark FRY'S. It differs only by changing “Fry's” to “Fry” and adding the generic term “Electronics”. These differences are also insufficient to distinguish the domain name and trademark.
The Panel concludes that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondents to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondents to use its trademarks.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondents have used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondents.
The Panel concludes that the Respondents have no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy. C. Registered and Used in Bad Faith
The Panel has little difficulty in concluding that the disputed domain name was registered and used in bad faith.
Given the similarity between the disputed domain name and the Complainant's distinctive mark FRY'S ELECTRONICS, the Panel is satisfied that the Respondents registered the disputed domain name with the Complainant's trademark in mind.
The Respondents have not come forward to deny that the Complainant's assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondents would wish to register the disputed domain name of which the Respondents have offered no explanation.
The disputed domain name has been used for a website consisting of sponsored links to sites offering a range of products and services competing with those of the Complainant.
The Panel is also mindful of the “cyberflying” activity in this case (i.e. whereby the registrant name was apparently changed after the Complaint was served) and also the likelihood that the registrant name “Haclav Vavel” is a false one, namely an apparent play on the name of the well-known Czech writer and politician Vaclav Havel.
The Panel concludes from the foregoing that the Respondents have registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondents have intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's trademarks. The Panel therefore finds that the Complainant has established the third element 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 be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: August 5, 2009
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