Electronic Data Systems Corporation v. Stephen Page
Claim Number: FA0205000114365
Complainant is Electronic Data Systems Corporation, Plano, TX (“Complainant”) represented by Abigail Rubinstein, of Baker Botts LLP. Respondent is Stephen Page, Dallas, TX (“Respondent”).
The domain name at issue is <eds.biz>, registered with 1stDomain.Net.
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.
Judge Harold Kalina (Ret.) 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. 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 May 21, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.
On May 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 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”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Harold Kalina (Ret.) as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
1. Respondent’s <eds.biz> domain name is identical to Complainant’s registered EDS mark.
2. Respondent has no rights or legitimate interests in the <eds.biz> domain name.
3. Respondent registered the <eds.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous registrations for its EDS mark registered with the U.S. Patent and Trademark Office (“USPTO”). More specifically, Complainant owns Reg. Nos. 952,895 registered February 6, 1973 and 2,047,497 registered March 25, 2997, among others. Additionally, Complainant owns trademark rights for the EDS mark in virtually every jurisdiction in the world that recognizes such rights and grants the ability to register marks, including, but not limited to: Argentina; Australia; Austria; Bahrain; Benelux; Ireland; Israel; Italy; Taiwan; Trinidad and the United Kingdom, among others.
Complainant was founded in 1962 as Electronic Data Systems and has been using the EDS mark as its abbreviation since as early as 1964. Complainant supports more than 2.2 million desktops worldwide, manages about 46,000 servers and provides web hosting for about 750 international clients. Complainant’s worldwide revenues approached $21.5 billion dollars in 2001 alone. Complainant has spent over $500 million dollars on advertising and promoting its name and EDS mark internationally since its inception. Complainant also operates from the following URLs: <eds.com>, <my-eds.com>, <eds.de>, <eds.fr> and <edsatlanticchallenge.com>.
Respondent registered the disputed domain name March 27, 2002 and has yet to develop a purpose or website in conjunction with the <eds.biz> domain name.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
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.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (“gTLD”) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has established its rights in the EDS mark through international registration and continuous use of the mark since as early as 1964.
Respondent’s <eds.biz> domain name is identical to Complainant’s registered EDS mark in spelling and form, and incorporates Complainant’s entire mark in its second level domain. Respondent’s addition of the gTLD “.biz” is insignificant to the “identical” inquiry conducted under STOP Policy ¶ 4(a)(i). See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the <.biz> gTLD in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <eds.biz> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, because Respondent failed to submit a Response refuting Complainant’s allegations, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
It is not apparent to the Panel that Respondent has rights or legitimate interests in the <eds.biz> domain name. In fact, Complainant’s famous mark and unanswered allegations contained in its Complaint create a presumption against Respondent being the owner of a trade or service mark that is identical to the disputed domain name. Respondent has not come forward with any evidence that it has rights or legitimate interests in the EDS mark anywhere in the world. Therefore, Respondent has failed to establish rights in the domain name pursuant to the threshold established by STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Respondent has yet to develop a website or designate a purpose in conjunction with its <eds.biz> domain name. The burden of proof lies with Respondent in producing reliable and credible evidence that the disputed domain name was registered for a legitimate purpose. Respondent’s failure to support its registration of the infringing domain name by showing it has made demonstrable preparations to use <eds.biz> in connection with a bona fide offering of goods or services implies that Respondent has no such rights or legitimate interests under STOP Policy ¶ 4(c)(ii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests).
There is no evidence or information before this Panel that suggests Respondent is known as “EDS” or by its <eds.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). Because Respondent registered such a famous and established mark as its domain name, there is a presumption that Respondent is not commonly known by the <eds.biz> domain name. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark prevented Respondent from being commonly known by <grammy.biz>).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
It has been widely held by previous Panels that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. Due to the nature of NeuLevel’s STOP registration procedure, Complainant’s listing on the Principal Register of the USPTO and the fact that Respondent is situated only eighteen miles from Complainant’s corporate headquarters, Respondent is thought to have had notice of Complainant’s rights in the EDS mark. Respondent’s registration of the disputed domain name, despite knowledge of Complainant’s preexisting rights in the mark, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Additionally, Respondent’s registration of a domain name that incorporates Complainant’s entire EDS mark will eventually lead to user confusion. Complainant has used the EDS mark for at least the past thirty years internationally and operates from numerous websites utilizing the EDS mark. A percentage of Complainant’s interested Internet consumers will assuredly be directed to Respondent’s website. Respondent has failed to establish rights or legitimate interests in the <eds.biz> domain name, which implies Respondent had opportunistic motives in registering Complainant’s established mark in its domain name. Respondent’s actions evidence bad faith under STOP Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that relief should be hereby GRANTED.
Accordingly, it is Ordered that the <eds.biz> domain name be TRANSFERRED from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
Judge Harold Kalina (Ret.), Panelist
Dated: July 18, 2002
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