Marconi Commerce Systems Inc. v Collectibles
Claim Number: FA0202000104656
The Complainant is Marconi Commerce Systems Inc., Greensboro, NC (“Complainant”) represented by Steven N. Terranova, of Withrow & Terranova PLLC. The Respondent is Collectibles, Austin, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gilbarcoonline.com>, registered with Intercosmos Media Group.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 14, 2002; the Forum received a hard copy of the Complaint on February 14, 2002.
On February 14, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <gilbarcoonline.com> is registered with Intercosmos Media Group and that the Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 February 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 11, 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@<gilbarcoonline.com> by e-mail.
A timely Response was received and determined to be complete on March 11, 2002.
On March 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant asserts that it is the owner of many U.S. and international trademarks to the name Gilbarco and permutations thereon. Complainant’s corporate name was previously Gilbarco Inc. before being changed to Marconi Commerce Systems Inc. Complainant still sells fuel dispensers and similar products under the Gilbarco mark worldwide. Complainant asserts that “Gilbarco” is a famous mark in the retail petroleum industry. Complainant contends that the domain name in question, <gilbarcoonline.com>, is a simple permutation of the well established mark. The addition of “online” does nothing to distinguish the domain name from the mark. “Online” is descriptive of the world wide web and the Internet in general. Many companies refer to their web services through the moniker “online,” and, says Complainant, the marks are essentially identical.
Complainant also asserts that Respondent has no rights or legitimate interest in the domain name. Respondent, to the best of Complainant’s knowledge has never used the domain name. When a visitor lands on the web page associated with <gilbarcoonline.com>, a place holder page is displayed. Thus, the domain name has not been developed in any bona fide manner that is readily ascertainable
Complainant also asserts, upon learning that Respondent had registered the domain name in question, that its counsel approached Respondent. The initial email, attached as Exhibit 8, was sent on January 17, 2002 from Steven N. Terranova to Respondent’s listed email address. In this email, Mr. Terranova identified himself as the attorney who represented Marconi Commerce Systems Inc., the owner of the Gilbarco marks, and asked how much it would cost to transfer the name to Marconi.
Mr. Foley, the administrative contact for Respondent, initially responded by telephone, but to make sure that there were no later misunderstandings as to who said what when, Mr. Terranova responded with a second email also dated January 17, 2002 in which Mr. Terranova reiterated his inquiry as to the availability of the <gilbarcoonline.com> domain name.
On January 17, 2002, Respondent replied, by e-mail, attached as Exhibit 11, indicated that the asking price for the domain name was $150,000 if Mr. Terranova in fact represented Gilbarco, the fuel pump manufacturer. The asking price was twice that for other parties ($300,000.).
Complainant asserts that the offering price of $150,000 is extremely strong evidence that Respondent registered the domain name in bad faith and for the purpose of selling the domain name for a large sum of money clearly in excess of any reasonable out-of-pocket expenses directly related to the domain name.
Respondent does not dispute complainant’s legal rights to the trade mark “Gilbarco.” The term “<gilbarcoonline.com>” is intended to be descriptive that information is available at this site concerning “Gilbarco”. Respondent also asserts that the Complainant has demonstrated that it had no interest in this domain, <gilbarcoonline.com>, as it has been available “from the inception of the Internet.”
Respondent asserts that Complainant
knowingly and willfully submitted (complainant’s exhibit7) false misleading and inaccurate information to the provider. Complainant’s exhibit 9 clearly states that changes were made to <gilbarcoonline.com> on 1-18-2002. At that time it was redirected to marconipumps.com where a disclaimer appeared.....
The Respondent contends, as it alleges is reflected in Complainant’s Complaint, that it was in the course of making preparations to develop <gilbarcoonline.com>. Respondent asserts that it intended and still intends to develop a website which will be an independent forum for the discussion of gasoline dispensers and point of sale systems, including repair and maintenance, with comparisons of different manufacturers and systems.
Respondent alleges that it received an email from the Complainant stating an interest in purchasing <gilbarcoonline.com>. Respondent responded by telephone, and the Complainant responded to the phone call with a second email. Respondent contends that it dismissed the Complainant “as a crack pot or a non-entity, someone not relevant.” Respondent “did respond to the second email with the least effort and two dollar amounts were forwarded to the complainant first 150,000.00 for Gilbarco inc and second 300,000.00 for anyone else these amounts were presented without explanation.” Respondent contends that it
“felt that if the complainant was sincere they would call back for an explanation, explanation follows: 150,000.00 was the price to Gilbarco inc as the respondent hoped to gain the goodwill of the complainant and this goodwill would offset the deficiency from 300,000.00 in assisting the respondent in developing a subsequent website, 300,000.00 was the estimated cost of developing such a site without this goodwill.”
The Respondent contends that it “never initiated contact with the complainant for any purpose concerning <gilbarcoonline.com> (sale, rental, lease, or any other reason).” It alleges that it “did not pursue or attempt to engage the complainant for the purpose of selling the domain <gilbarcoonline.com>. The respondent was merely glad that the complainant had vacated the respondent’s email.”
Obviously, and as all but admitted by the Respondent, the domain name and the mark are confusingly similar, although not identical. As the Complainant points out, addition of “online” is not sufficient to make the mark and name distinct. Complainant has established its statutory trademark rights, although the evidence is not sufficient to find that the mark is a “famous” mark.
The addition of a generic term to another's mark is not enough to create a distinct mark capable of defeating a claim of identical or confusingly similar. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark). Cases such as The Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000), are easily distinguishable.
Complainant has also demonstrated that Respondent has no rights in the name. First, Respondent seems to argue that there is a “fair use” issue. That it intended to develop a web site for discussion of fuel industry delivery systems, but, in fact, there has been no such development of any such site. Therefore, there has been no use of the domain name and no fair use of the trademark.
Respondent is not using the disputed domain name for a legitimate noncommercial or fair use because it has created a likelihood of confusion as to the source and sponsorship of its domain name. Furthermore, Respondent has failed to use the domain name in any way and therefore has no rights or legitimate interests pursuant to Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark; see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Respondent’s use of a disclaimer does not help. Respondent asserts that it displayed a disclaimer on its website that stated "this site is in no way associated with the Danaher company, Gilbarco Inc, Marconi Commerce Systems, its purpose is parity, news, and information." Respondent asserts that this disclaimer prevents any confusion and shows that Respondent did not intend to divert Complainant's customers to its website, but instead is offering a bona fide information service pursuant to Policy ¶ 4(c)(i). See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that the Respondent was using the domain name in connection with a bona fide offering of goods and services where Respondent was not holding itself out as Complainant given its disclaimer on the website).
However, the Respondent has made no use of the domain name and associated site. Therefore, it has made no “fair use” of the confusingly similar name. Therefore, the disclaimer cannot be invoked to resolve the issue of “rights in the name” in favor of the Respondent.
As to “bad faith” [see Policy ¶ 4(a)(iii)], the inference that Respondent acted improperly may be drawn from Respondent’s reply to Complainant’s e-mail concerning sale of the name. Respondent replied that it would be willing to sell the domain name for $150,000 to Complainant and $300,000 for anyone else. These prices do no reflect Respondent's out-of-pocket expenses and therefore reflect bad faith pursuant to Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the Respondent offered the domain name for sale to the Complainant for $125,000).
Respondent asserts that Complainant offered to buy the disputed domain name from Respondent, and therefore Respondent did not enter the discussion with bad faith intent. See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent).
However, given the price quoted by the Respondent, clearly cases such as Open Sys. Computing AS v. Alessandri cannot apply.
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
The mark and domain name are confusingly similar.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the name.
Registration and Use in Bad Faith
Respondent has registered and is using the domain name in bad faith.
The domain name <gilbarcoonline.com> shall be transferred to Complainant.
R. Glen Ayers, Panelist
Dated: March 26, 20002
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