DECISION

abc distributing, LLC v. Charles Tharp

Claim Number: FA0410000338548

PARTIES

Complainant is abc distributing, LLC (“Complainant”), 6301 East 10 Avenue, Hileah, FL 33013.  Respondent is Charles Tharp (“Respondent”), 1069 Schuler Street, Marion, OH 43302.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abctdistributing.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Karl V. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 4, 2004; the Forum received a hard copy of the Complaint on October 4, 2004.

On October 4, 2004, Register.com confirmed by e-mail to the Forum that the domain name <abctdistributing.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 1, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@abctdistributing.com by e-mail.

A timely Response was received from Respondent and determined to be complete on October 27, 2004.

A timely Additional Response was received from the Complainant on November 1, 2004.

A timely Additional Response was received from the Respondent on November 2, 2004.

All timely submissions were considered by the Panel.

An Additional Response was received from Respondent after the deadline for submissions and without the required fee.  Therefore, this submission is not in compliance with Supplemental Rule #7 and was not considered by the Panel.

An Additional Response was received from Respondent after the deadline for submissions and without the required fee.  Therefore, this submission is not in compliance with Supplemental Rule #7 and was not considered by the Panel.

On November 9, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

abc distributing, inc., has been the owner of the trademark “abc distributing, inc.” since 1994 and has used the trademark “abc distributing” in commerce since January, 1955.  Furthermore, abc registered the fictitious name “abc distributing” in Florida, in 1956 and became incorporated as abc distributing, inc. in December of 1963.  abc distributing, LLC (“abc”) has made extensive use of its “abc distributing mark” in interstate and international commerce in connection with advertising, promotion and  goods and services.  The “abc distributing” mark has become very famous and many consumers recognize the mark as a distinctive symbol of abc’s goodwill and quality products.

abc distributing, inc. registered its domain name “abcdistributing.com” on January 24, 1997 and transferred it to abc distributing, LLC on April 18, 2003.

A consumer might be diverted to Respondent’s website mistakenly believing that he or she has accessed the famous abc distributing’s website: “abcdistributing.com.”  The Respondent’s domain name <abctdistributing.com> differs only in one character from “abcdistributing.com” and that is the “t”, which does not make it distinctive or different in any real or apparent way from abc distributing, LLC’s domain name and abc’s registered trademarks.  Furthermore, it constitutes a clear and deliberate misspelling of the domain name and of the mark “abc distributing.”

The Respondent has no rights in respect to the domain name <abctdistributing.com>.”

Respondent, at the time of its registration of the infringing domain name <abctdistributing.com> had knowledge of the existence of abc’s domain name and website “abcdistributing.com” as well as the type of business held by abc.  On November 4, 2000, Respondent opened an account with abc, as a customer, under the name Tharp Trucking.  Respondent was the authorized ordering agent for this account.  During the life of the account with abc, Respondent has ordered more that $1,250.00 worth of merchandise from abc’s catalog and website.

Respondent, at the time of the First Notice of violation, sent by abc on July 13, 2004, was commercially using the infringing domain name in connection with a website that offered goods and services for sale of a general nature similar to those on Complainant’s website.  By using the website with a domain name constituting a clear and deliberate misspelling of the famous name and of the mark “abc distributing”, Respondent intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with Complainant’s name and mark.

B. Respondent

Respondent is a small family-run business and derived the nature of the name by taking the first initials of the family members thus coming up with the "abct".  For the last 12 years the Respondent’s personal e-mail account has been abct@thecomputercorner.net.  Respondent’s other business that was incorporated in the state of Nevada was abct trucking incorporated.  When Respondent came up with the domain name in dispute he also derived the name from the initials of his family members as done previously.  E-commerce would not have registered the domain name if there were any type of infringement on the rights of another domain name.  Respondent has no intention of taking any customers away from Complainant.

Complainant’s items have never been shown on Respondent’s web site.

Respondent is just trying to start a home-based internet business to add to our family income.  Respondent has no desire to mislead, divert or tarnish anyone’s trademark, including Complainant’s trademark.

Respondent derived the name from the initials of his family members (Alyssia, Brenda, Charles Tharp).  Since we are a distributor of products on Respondent’s web site we used the word distribution.  Respondent did not use this name to infringe on or to tarnish anybody’s trademark, or to intentionally attempt to attract Internet users from Complainant.  No claim is made in any way that Complainant is affiliated with or endorses Respondent’s web site or location or product or service.

C. Additional Submissions

Complainant

The domain name registered by Respondent <abctdistributing.com> was created on June 21, 2004 when it was registered by Charles Tharp.  Complainant has been the owner of the common law trademark “abcdistributing” in commerce since 1955, and has had a registered trademark for that name since 1994.

Respondent’s defense does not touch the issue of the confusingly similar nature of the name selected by Mr. Tharp to run his website selling products of the exact same nature which abcdistributing has been selling for decades.

Complainant does not contend that the letters “abct” are per se confusingly similar to “abcdistributing”.  Until they filed on June 21, 2004, they had absolutely no identity as abctdistributing.com.

There is not a single piece of evidence offered by Respondent that Mr. Tharp or “abctdistributing” was commonly known by the domain name prior to registration.  He should be found to have no legitimate interest in that name now.

Respondent clearly registered and used the <abctdistributing.com> domain name in bad faith.

Respondent, when he decided to use the Internet elected to “borrow” the name of his merchandise supplier “abctdistributing”, because “abct.com” had already been taken by somebody.

Mr. Tharp was doing for years what he suggests in his Response, selling through Ebay, until in July, 2004, when he decided to go online himself.  His web page on October 29 is exactly the same as it was on July 9, 2004 – containing products of exactly the same type as are sold by abcdistributing.

Respondent.

With the filing of the Complainant’s additional written statement and documents, the Respondent now has evidence of attempted domain name hijacking against the Complainant.

The products that the Complainant sells compared to the Respondent, are not similar in nature, as the Complainant is contending.

Respondent’s supplier of goods is not the Complainant.

Respondent’s website is still the same today as it was on the 9^th day of July, 2004, because that website is a promotional website.

FINDINGS

For the reasons set forth below, the Panel finds Complainant has proved that the domain name should be transferred.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has rights in the ABC DISTRIBUTING, INC mark, registered on April 19, 1994 (Reg. No. 1,831,704).  The mark is used in connection with telephone order services and computer online services featuring retail and wholesale distribution of general merchandise.  Complainant also has rights in the ABC DISTRIBUTING, LLC mark, registered August 10, 2004 (Reg. No. 2,872,367).  The mark is used in connection with telephone and facsimile order services, online and mail order catalog and services, and computerized online retail and wholesale services featuring general merchandise.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The domain name <abctdistributing.com> is confusingly similar to Complainant’s ABC DISTRIBUTING, INC mark.  The Panel finds the domain name confusingly similar to Complainant’s mark because merely adding the single letter “t” to Complainant’s mark fails to sufficiently distinguish the domain name from the mark.  Furthermore, the omission of the latter part of Complainant’s mark, specifically “INC,” is insignificant in obviating the confusing similarity that exists as the result of the domain name’s incorporation of the predominant portion of Complainant’s mark.  See Skechers U.S.A., INC. II v. Bergstein, FA 100309 (Nat. Arb. Forum Nov. 19, 2001) (finding the domain name <sketchers.tv> confusingly similar to Complainant’s SKECHERS mark because it merely added the letter “t” to Complainant’s mark); see also AT&T Corp. v. Zuccarini, D2001-1503 (WIPO Apr. 3, 2002) (finding the domain name <atttwireless.com> confusingly similar to Complainant's AT&T WIRELESS SERVICES mark because the domain name simply added an extra letter “t” to the term AT&T and merely eliminated the word “SERVICES” from the mark); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Acro Media Inc. v. Acromedia, Inc., FA 159399 (Nat. Arb. Forum July 17, 2003) (“The omission of the generic term 'inc' does not sufficiently differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i) because the Complainant's mark remains the principal element of the domain name.”).

Complainant has proven this element.

Rights or Legitimate Interests

Complainant charges that Respondent’s registration of the domain name <abctdistributing.com> “constitutes a clear and deliberate misspelling of the domain name and of the mark ‘abc distributing.’”  Complaint at ¶ 5(a)(4).  The Panel finds that Respondent intentionally registered a simple misspelling of Complainant’s mark as a means to direct Internet traffic to its own website.  Such typosquatting does not evidence a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) ("Respondent's use of the <my-seasons.com> domain name constitutes typosquatting [of Complainant's MYSEASONS mark] and such conduct is evidence that Respondent lacks rights or legitimate interests in the domain name."); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c.'"); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and <ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.").

The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name because Complainant did not license, or otherwise authorize, Respondent to use the ABC DISTRIBUTING, INC or ABC DISTRIBUTING, LLC marks.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

The Panel finds that Respondent is not commonly known by the domain name <abctdistributing.com>.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Complainant has proven this element.

Registration and Use in Bad Faith

The Panel finds that Respondent registered the disputed domain name, and subsequently used it, in bad faith pursuant to paragraph 4(a)(iii) of the Policy because Respondent had actual notice of Complainant’s rights in the ABC DISTRIBUTING, INC mark.  Complainant asserts that Respondent was a customer of Complainant as early as November 4, 2000, at which time Respondent opened an account under the name Tharp Trucking.  Complainant contends that Respondent was the authorized ordering agent for this account.  During the life of the account, Complainant states that Respondent “ordered more than $1,250.00 worth of merchandise from abc’s catalog and website.”  Complaint at ¶ 5(c)(1).  Respondent registered the domain name on June 21, 2004, well after Respondent began doing business with Complainant.  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding bad faith registration and use when Respondent had actual or constructive knowledge of Complainant's INDYMAC mark because prior to the registration of the <indymax.com> domain name, Respondent was a contact for one of Complainant's customer accounts); see also Tropar Mfg. Co., Inc. v. TSB, FA 126845 (Nat. Arb. Forum Dec. 4, 2002) (finding that Respondent registered and used the disputed domain names in bad faith where Respondent was a customer of Complainant's before it registered the disputed domain names and therefore, Respondent had actual notice of Complainant's rights in its mark prior to registering the domain names); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The Panel finds that Respondent engaged in the practice of typosquatting, and therefore finds that Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark. "Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark and stating, "[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy 4(a)(iii)."); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks. "Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith").

The Panel finds that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, which is bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar domain name to attract Internet users to its commercial website); see also Qwest Communications Int’l Inc. v. Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

Complainant has proven this element.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <abctdistributing.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Karl V. Fink (Ret.), Panelist
Dated: November 24, 2004

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