Computer Sciences Corporation v. Corporate Domains Inc.
Claim Number: FA0204000110841
Complainant is Computer Sciences Corporation, El Segundo, CA (“Complainant”) represented by Kenneth J. Purcell. Respondent is Corporate Domains Inc., Wilmington, DE (“Respondent”) represented by Merton E. Thompson, of Fish & Richardson, P.C.
The domain name at issue is <csc.biz>, registered with Corporate Domains, 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.
David E. Sorkin as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel, Inc. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel, and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 20, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed David E. Sorkin as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant owns longstanding rights in the trademark CSC, including multiple trademark registrations in the United States (on the PTO’s Principal Register) and abroad. Complainant and its mark are well known worldwide.
In 2001 Complainant was among two or more entities that applied to register <csc.biz> during the startup period for the newly introduced “.biz” top-level domain. In response to litigation challenging the legality of its startup procedure, NeuLevel rejected all applications submitted for <csc.biz> and thousands of other domain names for which multiple applications had been submitted, and announced that a new round of applications for these domain names would be conducted in March 2002. Respondent was among those who applied to register <csc.biz> during this second application period, but Complainant did not become aware of the second round until after it had taken place.
Complainant alleges that the domain name <csc.biz> is identical to its CSC mark (but for the addition of the “.biz” extension); that so far as is known to Complainant, Respondent possesses no trademark rights in the mark and has no legitimate interest in respect of the disputed domain name; and that Respondent registered the disputed domain name in bad faith in order to prevent Complainant from reflecting its mark CSC in a corresponding domain name, and for the purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark.
Complainant notes that Respondent is both the registrant and the registrar for the disputed domain name, and contends that Respondent has abused its authority and taken unfair advantage of its position as a NeuLevel-accredited registrar to register the disputed domain name for its own benefit with actual or implied knowledge of Complainant’s IP claim.
Complainant requests that the Panel order that the disputed domain name be transferred from Respondent to Complainant.
Respondent is a wholly-owned subsidiary of Corporation Service Company, which owns rights in and has used the CSC mark for many decades. Corporation Service Company owns a Delaware state registration for the trademark CSC and Design, has applied to register the CSC and Design mark with the USPTO, and holds a federal trademark registration for CSC INCSPOT & Design.
Respondent contends that it has rights in respect of the disputed domain name by virtue of its parent firm’s name and trademark rights, and that it did not register the disputed domain name in bad faith. Respondent notes that there are numerous entities that use CSC as a trademark or trade name, and contends that Complainant and Respondent are merely two among many such entities with legitimate interests in the domain name, each of which had an equal opportunity to attempt to register the name when it became available.
Respondent further contends that Complainant has brought this proceeding in bad faith, in that it was aware of Respondent’s identity and rights in the domain name before it filed the Complaint, and requests that the Panel find that Complainant has engaged in Reverse Domain Name Hijacking.
The Panel finds as follows:
(1) The disputed domain name is identical to a mark in which Complainant has rights.
(2) Respondent has rights or legitimate interests in respect of the disputed domain name.
(3) In light of the Panel’s finding on rights or legitimate interests, which is dispositive of the present matter, the Panel declines to enter a finding as to bad faith registration or use.
(4) The Panel declines to enter a finding of Reverse Domain Name Hijacking.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Complainant has demonstrated that it owns rights in the CSC mark, and for purposes of the STOP Policy, the disputed domain name <csc.biz> is deemed identical to that mark.
Respondent has demonstrated that its parent firm, Corporation Service Company, also owns rights in the CSC mark. But Respondent for some reason chose to register the disputed domain name in its own name rather than in the name of its parent firm, and it is not clear that Respondent standing on its own possesses any rights in respect of the disputed domain name. It is instructive that at least some other domain names owned or used by the parent firm are registered in its name rather than in Respondent’s name, unlike the disputed domain name in this proceeding. (See WHOIS records for <incspot.com>, <cscinfo.com>, <corporationservicecompany.com>, <csc.info>, and <cscinfo.biz>.) But Respondent is a wholly-owned subsidiary of the parent firm, does business under the parent’s name, and shares the parent’s physical address. Under these circumstances, the Panel has little cause to doubt that Respondent registered the disputed domain name on behalf of its parent firm. See generally Seagate Tech. LLC v. TC Services, FA102782 (Nat. Arb. Forum Feb. 7, 2002) (discussing assertion of rights by domain name registrant on behalf of third party). The Panel therefore finds that Respondent has rights or legitimate interests in respect of the disputed domain name.
The Panel’s finding as to rights or legitimate interests is dispositive, rendering the question of bad faith registration or use largely academic, and the Panel therefore declines to enter a formal finding on this question. However, Complainant’s claim that Respondent registered the disputed domain name in bad faith by taking unfair advantage of its role as a registrar merits further discussion. This contention does not fall within any of the particular bad faith circumstances set forth in paragraph 4(b)(ii) of the STOP Policy (none of which appear to be present in this case), but those circumstances are merely exemplary, not exhaustive. Yet the record before this Panel furnishes no evidence whatsoever that Respondent acted improperly in registering the disputed domain name, aside from the bare assertion that Respondent took “unfair and unconscionable advantage of its access and facilities as an authorized registrant.” Complainant does not allege, for example, that Respondent gave itself preferential treatment over other applicants seeking to use its services as a registrar, nor that it structured its application queue to give it an advantage over other competing registrars, nor that it violated any rules or policies promulgated by NeuLevel or ICANN. While a higher level of scrutiny may well be appropriate in light of Respondent’s dual role as registrant and registrar, there is insufficient evidence in the present record to support any inference of bad faith.
It strains credulity to believe that Complainant was unaware of Respondent’s parent firm’s coexisting rights in the CSC mark. Had the disputed domain name been registered in the name of the parent firm rather than that of Respondent, a finding of Reverse Domain Name Hijacking would likely be warranted. In the present circumstances, however, Complainant’s argument on the rights or legitimate interests question is sufficiently plausible that such a finding seems inappropriate. The Panel declines to enter a finding of Reverse Domain Name Hijacking.
The Panel finds that Respondent has rights or legitimate interests in respect of the domain name <csc.biz>. The Complaint is dismissed, and subsequent challenges to Respondent’s registration of <csc.biz> under the STOP Policy shall not be permitted.
David E. Sorkin, Panelist
Dated: June 21, 2002
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 The “round robin” selection process employed by NeuLevel for the March 2002 application period afforded a substantial relative advantage to registrars that submitted small application queues, and several accredited registrars employed various strategies to capitalize upon this design. NeuLevel subsequently placed certain domain names on hold pending investigation of undefined but “potentially abusive domain name registration practices.” See Statement from Jeffrey J. Neuman, Director, Policy and Intellectual Property, NeuLevel, Inc., April 11, 2002, http://www.neulevel.biz/press/press_release/pr_archive_2000_2001/2002.04.11.html. No allegations have been made linking Respondent or the disputed domain name in this proceeding to such practices.