DECISION

 

Informatics, Ltd. d/b/a System 3x/4xx Warehouse v. East Coast Computer

Claim Number: FA0112000103441

 

PARTIES

The Complainant is Informatics, Ltd. d/b/a System 3x/4xx Warehouse, Plano, TX (“Complainant”) represented by Lee Ann Wheelis, of Thompson & Knight LLP.  The Respondent is East Coast Computer, Ft. Lauderdale, FL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <3xwarehouse.com>, registered with Intercosmos Media Group, Inc.

 

PANEL

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

 

Linda M. Byrne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 28, 2001; the Forum received a hard copy of the Complaint on December 31, 2001.

 

On December 28, 2001, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <3xwarehouse.com> is registered with Intercosmos Media Group, Inc. and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. 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 January 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 22, 2002 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@3xwarehouse.com by e-mail.

 

A timely Response was received and determined to be complete on January 9, 2002.

 

On February 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's Domain Name <3xwarehouse.com> is identical or confusingly similar to its common law trademarks SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE, that Respondent does not have any right or legitimate interest in respect of the infringing domain name <3xwarehouse.com>, and that the infringing domain name <3xwarehouse.com> was registered by Respondent in bad faith and is being used in bad faith.

 

B. Respondent

Respondent denies the allegations of the Complaint, and contends that it is a warehouser and reseller of IBM 3x products under the <3xwarehouse.com> Domain Name.  Respondent further contends that it has used the domain name <3xwarehouse.com> since its creation in connection with a bona fide offering of goods, and that it did not register <3xwarehouse.com> in bad faith.

 

FINDINGS

Complainant is the owner of the common law trademarks SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE used with on-line retail store services featuring AS/400 midrange hardware, software and accessories and bar code hardware, software and accessories; electronic catalog services featuring AS/400 midrange hardware, software and accessories and bar code hardware, software and accessories; mail order catalog services featuring AS/400 midrange hardware, software and accessories and bar code hardware, software and accessories.

 

Complainant owns a pending U.S. trademark application for the mark SYSTEM 3X/4XX WAREHOUSE, for "catalogs and magazines featuring computer hardware, software, peripherals, accessories, components, supplies, forms, books and instructional manuals" and "mail-order and telephone order sales in the field of computer hardware, software, peripherals, accessories, supplies, forms, books and instructional manuals."  This application is Serial Number 76/319,746, filed September 28, 2001.  The application claims a date of first use of January 1990.

 

Complainant's online catalogs consistently feature the SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE trademarks.  The online catalog states, "Offering more than 15,000 brand name products and services, System 3X carries the largest inventory of AS400/Midrange hardware and software."

 

In addition, Complainant uses the domain name <system3x.com>.  This domain name is prominently featured in Complainant's print catalog.  Complainant began using its common law trademarks for its print catalog services around January of 1990, and began using its common law trademarks for its online services around July of 1996.

 

When used with reference to computer equipment, "3X" is a generic designation for certain computer systems and equipment.  Complainant's 1995-1996 catalog status, "The most complete source for connectivity solutions for the System 3X and AS/400."  There is no evidence of Complainant's use of the term "3X WAREHOUSE."  The Complainant's online and print catalogs do not feature the term 3X WAREHOUSE, without the preceding word SYSTEM.  Some pages of Complainant's 1995-1996 catalog refer to the catalog as Complainant's "3X/4XX Catalog."  Regarding its use of "3X Warehouse," Complainant produced several checks dated 1993 in which the customer referred to the payee, Complainant, as "3X WAREHOUSE."  The Complainant also produced a January 2001 Purchase Order in which the seller was listed as "3X/4X W'hse."  However, the Complainant has not proven common law use of the trademark "3X WAREHOUSE."  This is not the name of Complainant's company and there is no evidence that Complainant has used "3X WAREHOUSE" on any of its promotional materials.

 

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.

 

 

Confusing Similarity

Complainant holds common law trademark rights in SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE.  Common law rights in a mark sufficiently meet the trademark requirement of Policy ¶ 4(a)(i).  Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).  As Complainant has used the marks SYSTEM 3X/4XX WAREHOUSE and/or SYSTEM 3X WAREHOUSE on its catalogs since at least as early as January 1990 and on its internet website at <system3x.com> since at least as early as August 1996, Complainant established that it has rights under the ICANN Policy to the foregoing marks.  However, Complainant has demonstrated no use of the term 3X WAREHOUSE without the word SYSTEM.

 

Respondent's Domain Name, <3xwarehouse.com>, is different from Complainant's SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE marks.  The difference between the contested domain name and the SYSTEM 3X WAREHOUSE marks is the word "System."  With respect to this field of products (computer systems), the term SYSTEM is essentially generic and is not distinctive and memorable enough to cause an Internet user to distinguish between two parties' trademarks.  Reed Elsevier, Inc. & Reed Elsevier Properties, Inc. v. Magee, FA 100311 (Nat. Arb. Forum Nov. 23, 2001) (finding Respondent's domain name <lexissystems.com> confusingly similar to Complainant's LEXIS and LEXIS-NEXUS marks, "because it incorporates the entirety of one of Complainant's marks and merely adds the generic term 'systems' to the end") also ("The term 'systems' is synonymous with the computer/software field in which Complainant is engaged and therefore it is also descriptive of Complainant").

 

Respondent's domain name is so similar to Complainant's trademarks SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE, that a reasonable Internet user could assume that the Domain Name's owner is somehow affiliated with Complainant's well-established mark.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant's web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact no such relationship exists).

 

Although Respondent seems to dispute that the Complainant's trademarks, SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE, and Respondent's domain name, <3xwarehouse.com>, are confusingly similar, this Panel considers this contention to have questionable merit.  Moreover, the respective goods and services offered on each web site are identical or highly related, and the trade channels of each party are highly related. 

 

Furthermore, there has been actual confusion in this case.  One of Complainant's customers went to the <3xwarehouse.com> website, believing it to be associated with Complainant.  The customer proceeded to call the phone number on the <3xwarehouse.com> website in order to purchase products.  Complainant's customer discovered that he was not ordering from System3x/4xx Warehouse only when the customer representative at East Coast Computer could not find his company account.

 

On balance, after examining the relevant factors, this Panel concludes that the domain name <3xwarehouse.com> is confusingly similar to Complainant's SYSTEM 3X/4XX WAREHOUSE and SYSTEM 3X WAREHOUSE marks.

 

Rights or Legitimate Interests

The Complainant states, "On information and belief, Respondent is not offering goods or services on its website or otherwise under the name 3x Warehouse and is not commonly known by the domain name 3xwarehouse.com."

 

However, a review of Respondent's website shows that it does indeed sell products at its <3xwarehouse.com> website.  Respondent is conducting a legitimate business of selling computer related products and services.  Although Respondent's website does not prominently feature the trademark "3X WAREHOUSE," such use is not required under the UDRP Rules.

 

Respondent contends that it is legitimately using the domain name in a generic or descriptive sense.  Respondent is in the business of warehousing and distributing new and used IBM 3X products.  The term "warehouse" is a generic designation to indicate that the Respondent stocks large quantities of its products.  Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis").  Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where "Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant's business").  General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding that the term "craftwork" is in widespread use in a descriptive sense and therefore Respondent has successfully rebutted Complainant's arguments and has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com).

 

The Complainant has not proven that the designation "3X WAREHOUSE" is a non-descriptive, enforceable trademark owned by Complainant.  Moreover, Complainant has not proven that customers associate the term "3X WAREHOUSE" with Complainant.  Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven, and to establish secondary meaning the Complainant must show that the public identifies the source of the product rather than the product itself).  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the Complainant's CAR TOYS mark).

 

This Panel concludes that Respondent has legitimate rights in the domain name.  Respondent began to use the domain name <3xwarehouse.com> in connection with a bona fide offering of goods before Respondent received notice of this dispute.  See Kittenger Co. v. Kittenger Collector, AF-0107 (eResolution May 8, 2000) (finding that Respondent has rights and legitimate interests in the domain names in connection with its business based on the acquisition, reconditioning and re-sale of used Kittinger furniture); see also Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate interest in the domain name, <kidcarrier.com>, as a generic term for a class of products that Respondent sells).

 

Registration and Use in Bad Faith

The UDRP Rules set forth the following examples of bad faith:  1) a Respondent who registers a domain name in order to sell it to the rightful trademark owner, 2) a Respondent who registers a number of domain names so that the trademark owner is prevented from doing so, 3) a Respondent who registers the domain name to disrupt the business of a competitor, and 4) a Respondent who registers a domain name to divert computer users to its site.  There appears to be no clear evidence that this Respondent is doing any of the foregoing activities.  There is evidence of one instance of one of Complainant's customers being diverted to Respondent's website.  However, this Panel does not believe that this evidence rises to the level of bad faith when other relevant circumstances are considered.

 

Respondent apparently registered the domain name after seeing that the <3xwarehouse.com> domain name was available.  This discovery was made while the Respondent was searching for Complainant's web site.  This is not clear evidence of bad faith.  Respondent points out that its website clearly states that the site is sponsored by "East Coast Computer."  Cf. America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's mark by offering the same chat services via his website as the Complainant); Indentigene Inc. v. Genetest Lab, D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the Domain Name for a website to offer similar services is likely to confuse the Internet user into believing that Complainant is the source or is sponsoring the services offered at that site).

 

It is true that that Complainant and Respondent are competitors.  However, Complainant has not proven that Respondent registered the disputed domain name for commercial gain with the intent to confuse Internet consumers.  In this case, Respondent's registration and use of the disputed domain name were in good faith as they were intended to promote Respondent's business of warehousing and distributing 3X computer equipment.  The terms "3X" and "WAREHOUSE" are generic designations that are not trademarks owned by Complainant.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).

 

The Panel concludes that Complainant has not provided sufficient proof of its allegations for all three elements under paragraph 4(a) of the Policy so as to establish a prima facie case upon which the relief it now seeks can be granted.

 

DECISION

It is the decision of this Panel that the Domain Name at issue, <3xwarehouse.com>, not be transferred from Respondent to Complainant.

 

             

Linda M. Byrne, Esq., Panelist

 

Dated:  February 20, 2002