Claim Number: FA0203000105863
Complainant is Cisco Technology, Inc., San Jose, CA (“Complainant”) represented by Leslie C. McKnew, Esquire of Brobeck, Phleger & Harrison, LLP. Respondent is Dmitri Snytkine a/k/a ExamNotes.Net, East Strousburg, PA (“Respondent”) represented by Thomas F. Ford, Esquire of Smith, Ford, & Associates, P.C.
The domain name at issue is <ciscorouter.info>, registered with NamesDirect.com, Inc.
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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 13, 2002; the Forum received a hard copy of the Complaint on March 15, 2002.
On March 15, 2002, NamesDirect.com, Inc. confirmed by e-mail to the Forum that the domain name <ciscorouter.info> is registered with NamesDirect.com, Inc. and that the Respondent is the current registrant of the name. NamesDirect.com, Inc. has verified that Respondent is bound by the NamesDirect.com, 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 March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 8, 2002.
A timely Additional Submission was received from Complainant on April 15, 2002.
A timely Additional Submission was received from Respondent on April 17, 2002.
On April 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Cisco Technology, Inc. claims that it owns well-established rights to the famous mark and name CISCO in the United States and in many other countries in connection with a vide variety goods and services, such as, networking hardware and software including, but not limited to, routers. Complainant claims to own the following U.S. Trademark Registrations for CISCO:
MARK U.S.P.T.O.REGISTRATION NO. DATE OF REGISTRATION
CISCO 1,542,339 6/6/89
CISCO 2,314,702 2/1/00
CISCO 2,498,746 10/16/01
Complainant also contends that it owns U.S. Registered Trademarks for CISCO SYSTEMS, CERTIFIED INTERNET EXPERT, CISCO IOS, CISCO PRESS, CISCO SYSTEMS PRESS and CISCO SYSTEMS CAPITAL.
Complainant also contends that it has numerous pending Applications for Trademarks in the United States Patent and Trademark Office for CISCO, CISCO NETWORKS, CISCO POWER NETWORK, CISCO SYSTEMS VERIFY and CISCO SYSTEMS.
Complainant also contends that it owns numerous Trademarks Registrations for CISCO and CISCO-related marks in other countries, such as Australia, Benelux, Canada, Chile, China, Columbia, Costa Rica, The Czech Republic, The European Community, Germany, Hong Kong, Israel, Italy, Japan, South Korea, Malaysia, Mexico, New Zealand, Panama, Peru, Philippines, Poland, Romania, Russia, Saudi Arabia, Switzerland, Turkey, The United Kingdom and Vietnam among others.
Complainant also contends that it owns and uses a number of Internet domain names including <cisco.com>, <cisco.info.>, <ciscorouters.info> and <ciscosystems.com> among many others.
Complainant’s Trademark Registrations indicate that it claims its first use of CISCO as a mark in commerce was on December 27, 1984.
Complainant contends that in the over 17 year period of continuous use, it has sold and promoted extensively its products and services throughout the world under its CISCO marks and it is recognized worldwide as a premier provider of networking solutions. Complainant contends that due to its longstanding and extensive use of its family of CISCO marks and names, that it owns the exclusive rights to use the mark CISCO in the computer and technology fields.
Complainant contends that the domain name in question, <ciscorouter.info> is confusingly similar to CISCO’s family of well-known and distinctive marks for it begins with the identical CISCO wording of CISCO’s famous CISCO marks and ends with generic term “router” which is simply a networking product that CISCO designs, manufactures and sells throughout the world utilizing the CISCO mark.
Complainant contends that Respondent has no rights or legitimate interests in the <ciscorouter.info> domain name because (1) there is no evidence that Respondent offers or has expressed any good faith intention of offering any CISCO router products (2) there is no indication that Respondent has done or intends to do business under the designation “CISCOROUTER” (3) there is no indication on Respondent’s Website that Respondent is doing business as “CISCOROUTER” or that Respondent intends to legitimately offer any CISCO products under that designation (4) Respondent is not in the business of selling any CISCO router products, but is merely in the business of providing information regarding certification exams, including among other things, CISCO’s networking certification program (5) Respondent’s use will infringe upon CISCO’s trademark rights (6) Respondent fraudulently claims to own a U.S. Trademark Registration for the mark CISCOROUTER (Reg. No. E.G.B. 12345) (7) Respondent has previously been put on notice by CISCO that it has infringed and illegally used CISCO marks on its website and in metatags for its Website; (8) past communications with Respondent indicate that it lacks and can have no rights or legitimate interests in the subject domain name.
Complainant contends that Respondent registered the domain name in bad faith in that intends to use it to attract for commercial gain Internet users to its website by creating a likelihood of confusion with CISCO and its famous marks as to the source, sponsorship, affiliation or endorsement of Respondent. Complainant contends that Respondent is well aware of CISCO’s exclusive rights in the CISCO marks, that Respondent has a history of infringing on CISCO’s trademark and intellectual property rights, that Respondent provided fraudulent information in connection with the registration of this domain name indicating that it owns a federal trademark for CISCO Router when it does not.
Respondent contends that Complainant has offered no proof of any actual confusion between its marks and Respondent’s domain name. Respondent acknowledges that Complainant has rights in and to the mark CISCO, but claims that Complainant does not have any rights in the name or mark CISCO ROUTER. Respondent further contends that term CISCO and ROUTER are used within thousands of other domain names not owned by Complainant. Respondent contends that Internet users are familiar enough with the difference between the various domain names to not be confused.
Respondent contends that through its <examnotes.net> site it sells dozens of practice technical certification exams including those relating to Complainant’s CISCO certification examinations. That site is also designed to provide free information in a variety of other non-commercial resources such as discussions forums and other services to Internet users interested in the products, services and certifications offered by Complainant and many others. Respondent claims it does not sell or resell any of Complainant’s products.
Respondent contends that it registered the domain name in question with the intention of providing similar non-commercial information or resources to Internet users who have or may be considering purchasing the Complainant’s product. Respondent contends that its only intention in registering the domain name was to create a non-commercial resource for information regarding certain products offered to consumers by Complainant.
Respondent contends that its site was in development prior to this dispute and that it carries on each page the prominent disclaimer disassociating itself from Complainant. Respondent thus claims that there can be no confusion between this domain site and any of Complainant’s marks.
Respondent contends Complainant’s arguments regarding trademark infringement are misplaced and should be ignored since the ICANN Rules and Policies are not intended to adjudicate Lanham Act claims. Respondent further contends that Complainant has submitted no evidentiary or factual support for the assertions it makes regarding Respondent’s alleged lack of rights or legitimate interests in the domain name. Respondent contends that it made demonstrable preparations for the use of the domain name in a non-commercial setting. Respondent contends that it registered the domain name on September 13, 2001 and the first pages were published on the Internet around March 19, 2002. Respondent contends that it has never infringed the intellectual property rights of Complainant in the past as alleged. Respondent contends that there is no argument or factual submission that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant at any price or at any time. Respondent further contends that there is no argument or factual presentation that Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name nor has there been any evidence or argument that Respondent has engaged in a pattern of registering domain names for such purposes.
Respondent further contends that Complainant and Respondent are not competitors and therefore there can be no contention that Respondent registered the domain name for the purpose of disrupting business of a competitor.
Respondent contends that its site is non-commercial and contains a disclaimer “expressly approved by counsel for the Complainant.” Therefore, there can be no argument or evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to respond to its website or other online location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s Website.
Respondent contends that Complainant has engaged in reverse domain-hijacking by engaging in repeated, unsubstantiated challenges to Respondent’s registration <cicscorouter.info> without any basis therefore.
C. Additional Submission – Complainant
Complainant contends that it need not submit proof of actual confusion for the Panel to find that the domain name is confusingly similar to one or more of its marks.
Complainant contends that Respondent did not begin using the domain name in question until after CISCO filed and served the Complaint in these proceedings. As such, there could have been no actual confusion or evidence thereof to proffer. Complainant contends that the fact that other people also might be utilizing CISCO and/or Router or other variations thereof and also trying to trade on the good will and reputation of CISCO does not constitute a defense. Complainant contends that it clearly actively protects its trademarks. Complainant contends that the law is clear that the addition of a generic term such as “router” to a famous trademark such as CISCO does not distinguish the domain name in any meaningful way from the mark. Complainant contends that the disclaimer itself is evidence of the fact that the domain name is confusingly similar to its marks and it only appears once in the beginning of the Respondent’s Website and not on the following web pages.
Complainant contends that Respondent utilizes CISCO’s famous marks in its metatags for its website located at <ciscorouter.info.> Complainant contends that Respondent is in fact a competitor of CISCO for training materials and that the domain name was registered with the intent to use it to promote the products and services of companies other than CISCO as well which will likely include Respondent and CISCO’s other competitors. Complainant contends that Respondent merely copied some materials from other websites and put it on its website after it received the Complaint and such is an example of bad faith.
Complainant contends that Respondent’s claim for reverse domain-name hijacking is without merit since Complainant clearly owns numerous CISCO and CISCO-related marks and enforces them in accordance with the law.
D. Additional Submission – Respondent
Respondent claims that his disclaimer does in fact appear on the top and center of each and every page published at <ciscorouter.info>. Respondent contends that Complainant has failed to produce any evidence refuting Respondent’s contention that before any notice to Respondent of dispute, Respondent used or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services or that the Respondent is making legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent contends that it had intended from the beginning to utilize the <.info> domain name to provide information in a non-commercial setting and to serve as resource for users and potential users of the Complainant’s router products. Respondent contends that it has made use of the domain name for this purpose and intends to further expand the site to incorporate discussion forums and other non-commercial and neutral sources of information, commentary and opinion regarding the Complainant’s router products.
Respondent contends that Complainant has failed to produce any evidence whatsoever of the bad faith use and registration of the domain name.
(1) Complainant has met its burden to prove by a preponderance of the admissible, credible, relevant evidence that Respondent’s domain name is confusingly similar to trademarks in which Complainant has rights.
(2) Complainant has not met its burden to prove by a preponderance of the admissible, credible, relevant evidence that Respondent has no rights or legitimate interests in respect to the domain name.
(3) Complainant has not met its burden to prove by a preponderance of the admissible, credible, relevant evidence that Respondent’s domain name has been registered and is being used in bad faith.
(4) Complainant’s Complaint was filed in good faith and there has been no reverse domain name hijacking.
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
Respondent does not dispute that Complainant owns numerous valid, live Trademark Registrations for CISCO and that CISCO manufactures and sells routers to which are affixed said trademark. The first portion of the domain name in question is identical to the Registered marks of Complainant-CISCO. However, the domain name adds the word “ROUTER”. ROUTER is a generic term for a particular type of computing device. Indeed, Complainant manufacturers and sells such devices utilizing the trademark CISCO. Thus, the domain name in question is much like a domain name such as <McDonald’shamburgers>, being the famous name and mark of the manufacturer and the type of good sold under the mark.
U.D.R.P. 4(a)(i) only requires that Complainant prove by a preponderance of the admissible, relevant evidence that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. There is no requirement that Complainant produce any evidence of actual confusion between its mark and Respondent’s domain name nor that Complainant prove same. Since the domain name and the marks at issue here are not identical, the issue is simply whether they are “confusingly similar.” Since the addition to the mark is precisely the type of product made by the company which owns the mark, there can be little doubt that these marks are confusingly similar. In fact, the selection of this particular word to add to the CISCO mark was no doubt made precisely for the reason that anyone seeing <ciscorouter.info> would immediately associate that full name with the CISCO mark and thus Complainant. This is no doubt why Complainant owns and uses the similar domain name <ciscorouters.info>. If the domain name in question were something more akin to <ciscohamburgers.com>, there would be a serious question as to whether the two were confusingly similar. Such is not the case here.
Respondent’s use of a disclaimer, even if it does appear on each and every page of its website, is insufficient to dispel the confusion. The mark and domain name in question are confusingly similar on their face. Such confusing similarity exists no matter to what type of site the Internet surfer is directed when selecting the domain name. The initial interest confusion caused by the similarity between the mark and domain name is not dispelled or remedied by the disclaimer in question. By the time an Internet surfer has selected <ciscorouter.info> and is then directed to the website, he or she has already been confused. Thus, the owner of the mark is harmed as may be the Internet surfer. The effect of the disclaimer, if it is effective at all, may be to redirect the surfer elsewhere but not necessarily even to the legitimate authorized CISCO site(s).
Complainant has thus met its burden to prove by a preponderance of the admissible, credible, relevant evidence that Respondent’s domain name is confusingly similar to a trademark in which it has rights.
Rights or Legitimate Interests
Respondent argues that it has rights and legitimate interests in respect to the domain name by virtue of it meeting the requirements of UDRP 4(c)(i) and/or (iii).
Respondent contends that it made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before it received any notice of this dispute. However, Respondent presents no evidence whatsoever to support this contention and this Arbitrator cannot find, based on this Record, that such “demonstrable preparations” were made. The claim by a Respondent alone is insufficient to constitute evidence of “demonstrable preparations.” Thus, UDRP 4(c)(i) is of no help to Respondent.
However, Respondent may be making an arguably, legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or tarnish the trademark or service mark at issue. UDRP 4(c)(iii).
There is no doubt that even though the site to which the domain name leads a surfer appears to be non-commercial, that Respondent is in fact a competitor of Complainant in certain respects and does operate another website on which it sells products and/or services which compete with some of Complainant’s. In addition, that site appears to provide information and/or products of other competitors of Complainant.
The site to which the domain name in question directs a surfer at the present time does not appear to include links to any other sites, including the “commercial” one of Respondent nor is there any information about Respondent’s other commercial site on it. Complainant has presented no evidence to indicate that Respondent is in fact making direct or indirect commercial use of this site.
Based upon this Record, this Arbitrator finds that Respondent is making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue UDRP 4(c)(iii). Thus, Respondent appears to have legitimate interests in respect of the domain name.
Registration and Use in Bad Faith
For the reasons stated above, this Arbitrator does not believe that Complainant has met its burden to prove that Respondent’s domain name has been registered and is being used in bad faith. However, as with the requirements of UDRP 4(a)(ii), there may come a time when there is sufficient evidence to support a claim of bad faith registration/use by Complainant and Complainant is well advised to monitor the activities of Respondent in this regard.
Complainant’s Complaint is hereby dismissed and the relief requested is denied.
M. KELLY TILLERY, ESQUIRE, PANELIST
Dated: April 26, 2002
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