Avnet, Inc. v. Av-Network, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avnet, Inc. v. AV-Network, Inc.

Case No. D2000-0097

1. The Parties

1.1 The Complainant is Avnet, Inc., a corporation organized under the laws

of the State of New York, United States of America, having its principal place

of business at 2211 South 47th Street, Phoenix, Arizona, United States

of America.

1.2 The Respondent is AV-Network, Inc., a non-profit organization organized

under the laws of the State of New Jersey, having its principal place of business

at 281 East Madison Avenue, Dumont, New Jersey, United States of America.

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <avnet.org>, which domain name is registered

with Network Solutions, Inc., based in Herndon, Virginia.

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property

Organization Arbitration and Mediation Center (the "WIPO Center")

on February 25, 2000, and the signed original together with four copies

forwarded by express courier under cover of a letter of the same date. An Acknowledgment

of Receipt was sent by the WIPO Center to the Complainant, dated February 28, 2000.

3.2 On February 25, 2000, a Request for Registrar Verification was transmitted

to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm

that the domain name at in issue is registered with NSI; (2) confirm that the

person identified as the Respondent is the current registrant of the domain

name; (3) provide the full contact details (i.e., postal address(es), telephone

number(s), facsimile number(s), e-mail address(es)) available in the registrar’s

Whois database for the registrant of the disputed domain name, the technical

contact, the administrative contact and the billing contact; (4) confirm

that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in

effect; (5) indicate the current status of the domain name.

3.3 On February 25, 2000, NSI confirmed by reply e-mail that the domain name

<avnet.org> is registered with NSI, is currently in active status, and

that the Respondent, AV-Network, Inc., is the current registrant of the name.

The registrar also forwarded the requested Whois details, and confirmed that

the Policy is in effect.

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the

"Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy (the "Supplemental Rules"). The Panel has independently determined

and agrees with the assessment of the WIPO Center that the Complaint is in formal

compliance with the requirements of the Uniform Domain Name Dispute Resolution

Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental

Rules. The required fees for a single-member Panel were paid on time and in

the required amount by the Complainant.

3.5 No formal deficiencies having been recorded, on March 1, 2000, a Notification

of Complaint and Commencement of Administrative Proceeding (the "Commencement

Notification") was transmitted to the Respondent (with copies to the Complainant,

NSI and ICANN), setting a deadline of March 20, 2000, by which the Respondent

could file a Response to the Complaint. The Commencement Notification was transmitted

to the Respondent by e-mail to the e-mail addresses indicated in the Complaint

and specified in NSI’s confirmation, as well as to <postmster@avnet.org>.

In addition, the complaint was sent by express courier to the postal address

given. Having reviewed the communications records in the case file, the Administrative

Panel finds that the WIPO Center has discharged its responsibility under Paragraph

2(a) of the Uniform Rules "to employ reasonably available means calculated

to achieve actual notice to Respondent." In any event, evidence of proper

notice is provided by the evidence in the record of the Respondent’s participation

in these proceedings.

3.6 On March 10, 2000, the Center received a communication by email from the

Respondent in the above case requesting a 20 day extension of the deadline for

the filing of the response. On March 13, 2000, the Center forwarded the request

by email to the Complainant for comments. Comments from the Complainant were

submitted by email to the Center on March 13, 2000. On March 15, 2000, the request

for extension of the deadline for the submission of the response was granted,

and the new filing deadline was set at April 8, 2000. A response was received

on April 7, 2000.

3.7 On April 11, 2000, in view of the Complainant’s designation of a single

panelist (but without prejudice to any election to be made by the Respondent)

the WIPO Center invited M. Scott Donahey to serve as a panelist in Case No.

D2000-0097, and transmitted to him a Statement of Acceptance and Request for

Declaration of Impartiality and Independence.

3.8 Having received on April 11, 2000, M. Scott Donahey’s Statement of Acceptance

and Declaration of Impartiality and Independence, on April 12, 2000, the WIPO

Center transmitted to the parties a Notification of Appointment of Administrative

Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed

as the Sole Panelist. The Projected Decision Date was April 25, 2000. The Sole

Panelist finds that the Administrative Panel was properly constituted and appointed

in accordance with the Uniform Rules and the WIPO Supplemental Rules.

4. Factual Background

4.1 Complainant registered the domain name <avnet.com> on May 22, 1990.

4.2 Complainant is in the business of offering a full range of warehouse storage

and packaging of goods, assembly and delivery of electronics, electrical and

computer equipment and components, and advisory, consulting and distribution

services in the field of electronics, electrical equipment and computers and

computer components. Complainant offers these services to companies and individuals

by a variety of means, including, but not limited to, a web site on the global

computer network, which web site is located at <avnet.com>. Complainant

has been in this business since at least as early as March 1986. Complainant

obtained trademark registrations for the mark AVNET at least as early as March

15, 1988 and obtained a registration for the domain name <avnet.com> on

May 22, 1990.

4.3 Complainant has offered the goods and services described in paragraph 4.2

since at least as early as March 1986.

4.4 In October 1998, Complainant became aware that the domain name <avnet.org>

had been registered by Respondent. Through its attorneys, on October 13, 1998,

Complainant requested Respondent to cease and desist from using the domain name

<avnet.org>, on the basis that it was confusingly similar to Complainant's

marks and domain name.

4.5 Complainant became aware of Respondent's registration and use of the domain

name at issue in December 1998.

4.6 Complainant contacted Respondent re: Respondent's registration and use

of the domain name at issue.

4.7 Following extensive negotiations, Respondent demanded an amount apparently

in excess of its out of pocket costs and expenses incurred in conjunction with

the registration and use of the domain name at issue.

4.8 After numerous attempts to resolve the domain name dispute were unsuccessful,

on March 31, 1999, Complainant initiated domain name dispute policy proceedings

with the domain name registrar, NSI.

4.9 The Respondent is a nonprofit Internet access bandwidth cooperative and

network of communications professionals that provides Internet services to its

members.

4.10 The domain name at issue <avnet.org> was registered by Respondent

on February 8, 1995. The <avnet.org> domain name is based on an abbreviation

of Respondent's trade name, AV-Network, Inc.

4.11 Respondent had not heard of Avnet, Inc. until receiving Complainant's

cease and desist letter in October 1998. This was over 3 years after the domain

name at issue was registered and after Respondent had begun using the domain

name at issue to conduct Respondent's business.

4.12 Once the <avnet.org> name was suspended under the NSI Policy, all

content was moved to another temporary domain (nj.org) until Respondent could

decide on where to start over with a new web presence.

4.13 Upon the adoption of the Uniform Domain Name Dispute Resolution Policy,

all domain names which had been placed on Hold under the terms of the NSI Policy,

including the domain name at issue, were reactivated.

4.14 Respondent became aware of the reactivation of the <avnet.org> domain

name in February 2000. The first indicated was an e-mail communication inquiring

about Respondent's cooperative and its services, which was sent to the <avnet.org>

secretary's e-mail address (woy@avnet.org). Shortly thereafter, Respondent received

Complainant's complaint. Upon entering the URL "www.avnet.org" on an Internet

browser, Respondent realized that <avnet.org> was again functioning. Respondent

is now proceeding to get the site back to where it was prior to being suspended.

5. Parties’ Contentions

5.1 Complainant

Complainant contends that Respondent has registered as a domain name a mark

which is identical to the service mark and trademark registered and used by

Complainant, that Respondent has no rights or legitimate interests in respect

to the domain name at issue, and that Respondent has registered and is using

the domain name at issue in bad faith.

5.2 Respondent

Respondent admits that the Second Level Domain ("SLD") name at issue is identical

to Complainant's trademark. However, Respondent contends that there is no likelihood

of confusion, that there is no evidence of actual confusion, that Respondent

has rights to and legitimate interests in respect of the domain name at issue,

and that Respondent is and has been using the domain name at issue for a legitimate

and noncommercial fair use.

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the

Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States,

and since United States’ courts have recent experience with similar disputes,

to the extent that it would assist the Panel in determining whether the Complainant

has met its burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States.

6.2 Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

2) that the Respondent has no legitimate interests in respect of the domain

name; and,

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

6.3 Respondent has admitted that the domain name at issue is identical to the

trademark or service mark in which the Complainant has rights. Accordingly,

Complainant has established the first of the three required elements.

6.4 However, the Complainant has failed to establish that the Respondent has

no rights or legitimate interests in respect of the domain name at issue.

6.5 Respondent may demonstrate rights to or legitimate interests in respect

of the domain name at issue by showing (1) it has used or made demonstrable

preparations to use the domain name in connection with a bona fide offering

of goods or services prior to the dispute; (2) an indication that the Respondent

has been commonly known by the domain name even if it has acquired no trademark

rights; or (3) legitimate noncommercial fair use of the domain name without

intent to divert consumers or to tarnish the trademark. Policy, ¶ 4(c).

6.6 In this case, Respondent has demonstrated two of the three factors.

6.7 Respondent has demonstrated that it has used the domain name in connection

with a bonafide offering of goods or services prior to the dispute. See Complaint,

Exhibit A to Exhibit F.

6.8 As a non-profit organization, Respondent has made legitimate fair use without

intent to divert consumers or to tarnish the trademark. Complainant has protected

its commercial interests in its name by registering <avnet.com> in 1990.

Complaint, ¶ 9,B. At that time, Complainant elected not to register <avnet.org>.

Respondent registered <avnet.org> in February, 1995, and began using the

domain name in conjunction with its non-profit IPeXchange network in 1996 [1].

Response, ¶¶ 5 and 7. This is evidence of rights to or legitimate interests

in the domain name, absent notice of a dispute. Policy, ¶ 4(c)(i). Shelly

Harrison v. Coopers Consulting, Inc., ICANN Case No. AF-0121. Complainant

failed to object to such use until October 1998, almost 4 years after registration

and almost 3 years after the domain name was used to establish a web site. Response,

¶ 8. Draw-Tite, Inc. v. Pittsburgh Spring, Inc., ICANN Case No.

D2000-0017.

6.9 As a not for profit organization, Respondent is and has been engaged in

a noncommerical fair use of the domain name without intent to divert consumers

or to tarnish the trademark. Policy, ¶ 4(c)(iii).

6.10 Because Respondent has established rights to and legitimate interests

in the domain name at issue, there is no need for the Panel to examine whether

the domain name was registered and is being used in bad faith, since the failure

of the Complainant to establish even one of the elements results in a failure

of proof.

7. Decision

For all of the foregoing reasons, the Panel decides that the Respondent has

rights and legitimate interests in respect of the domain name at issue, and

the Complaint is therefore denied.

M. Scott Donahey

Presiding Panelist

Dated: April 25, 2000

Footnotes:

1. Moreover, it is likely that an unknowing

user would initially attempt to contact the commercial entity, Avnet, Inc.,

by trying <avnet.com>, the commercial domain name, rather than <avnet.org>.

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