Getronics Nederland B.V. v. MIC a/k/a
Syed Hussain
Claim Number: FA0207000114752
PARTIES
Complainant
is Getronics Nederland B.V.,
Amsterdam, NETHERLANDS (“Complainant”) represented by Michael J. Bevilacqua, of Hale
and Dorr LLP. Respondent is MIC a/k/a Syed Hussain, Closter, NJ, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <getronicsdecan.com>,
registered with Bulkregister.com, Inc.
PANEL
On
August 8, 2002 pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 1, 2002; the Forum received a hard copy of the Complaint
on July 1, 2002.
On
July 1, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the
domain name <getronicsdecan.com>
is registered with Bulkregister.com, Inc. and that Respondent is the current
registrant of the name. Bulkregister.com,
Inc. has verified that Respondent is bound by the Bulkregister.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
July 11, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 31,
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@getronicsdecan.com by e-mail.
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.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <getronicsdecan.com>
domain name is confusingly similar to Complainant’s registered GETRONICS
and DECAN marks.
2. Respondent does not have any rights or
legitimate interests in the <getronicsdecan.com> domain name.
3. Respondent registered and uses the <getronicsdecan.com>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of several
worldwide trademark and service mark registrations for the GETRONICS mark. In
addition, Complainant acquired French company Decan S.A. on March 15, 2001, and
is the owner of several registrations incorporating its name, DECAN.
MARK
|
COUNTRY |
SERIAL/REG. NO. |
FILING/REG. DATE |
GOODS OR SERVICES |
|
GETRONICS |
Canada |
1025203 |
8.10.99 |
Computers, computer peripherals, namely,
printers, routers, patch boxes, hubs, modems, servers, computer terminals, inter
alia. Professional business consultancy, professional financial
consultancy, maintenance and repair of computers, computer peripherals, etc. |
|
GETRONICS |
United Kingdom |
1400473 |
7.12.91 |
Paper tapes, cards, all for or bearing data,
and all for use with electrical or electronic apparatus and instruments;
office machinery. |
GETRONICS
|
International Register |
718563 |
7.15.99 |
Professional business consultancy; consultancy
in the field of business management, business economy and business
administration, etc. |
|
GETRONICS |
United States |
75/772220 |
8.10.99 |
Telecommunications and data communications
services, namely, personal communication; rental of telecommunication and
data communication equipment. |
|
DECAN |
European Community |
1021583 |
1.21.99 |
Scientific, nautical, surveying, electric,
photographic, cinematographic, optical, weighing, measuring, signaling,
checking (supervision), life-saving and teaching apparatus and instruments,
etc. |
|
DECAN |
France |
52812294 |
7.4.94 |
Advertising; commercial business management;
commercial administration; office work, computer programming and magnetic
recording carriers. |
Complainant is one of the world’s leading
providers of Information and Communication Technology (ICT) solutions and
services to professional users of ICT. Complainant employs over 30,000
employees and maintains a direct presence in over thirty-five countries. Complainant
is headquartered in Amsterdam, with regional head offices in Boston, Singapore
and Washington, DC.
Complainant has used its GETRONICS mark
continuously since 1980. On March 15, 2001, Complainant released a worldwide
statement announcing that it had acquired the French company, Decan. The
records of BulkRegister.com indicate that Respondent registered the domain name
<getronicsdecan.com> on March 16, 2001, one day after
Complainant’s worldwide announcement.
Complainant’s GETRONICS and DECAN
products and services are marketed around the world exclusively under
Complainant’s registered trademarks, and are available solely from Getronics,
Decan and its suppliers. Complainant’s marks are universally recognized and
relied upon as identifying Complainant as the sole source of its products and
services, and distinguish Complainant’s products from its competitors. As a
result of the aforementioned circumstances, the GETRONICS and DECAN marks have
acquired substantial goodwill and are valuable commercial assets.
As stated, Respondent registered the <getronicsdecan.com>
domain name on March 16, 2001. Respondent has not developed a purpose or a
corresponding website in conjunction with its registration of the disputed
domain name. On July 31, 2001, Complainant’s authorized representative sent a
letter to Respondent requesting that Respondent discontinue all plans to use
the domain name and to transfer the domain name to Complainant. In response to
Complainant’s cease and desist request, Respondent telephoned Complainant’s
representative and offered to sell the domain name registration, and implied
that the requested figure would be in excess of out-of-pocket expenses.
DISCUSSION
Paragraph 15(a) of 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.”
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 Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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.
Complainant has sufficiently demonstrated
its rights in the GETRONICS mark through registration with various
international authorities and subsequent continuous use of the mark in
commerce. Complainant has also established rights in the DECAN mark via its
acquisition of the French Company that previously held rights in the mark, and
through subsequent continuous use of the mark since acquiring rights on March
15, 2001.
Respondent’s <getronicsdecan.com>
domain name is confusingly similar to Complainant’s GETRONICS and DECAN
marks. Respondent’s combination of Complainant’s marks fails to create a
distinct and separate mark because Internet users identify both marks as
affiliated with Complainant; thus, Respondent’s domain name is rendered
confusingly similar. See Nintendo
of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name); see also 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 website, think that an
affiliation of some sort exists between Complainant and Respondent, when in
fact, no such relationship would exist).
Furthermore, the addition of the generic
top-level domain “.com” is required in domain name registrations, and is not
sufficient in distinguishing a domain name from the mark reflected in the
second-level domain. Respondent’s second-level domain remains the primary
object of scrutiny under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a formal
Response in this proceeding, and Complainant’s allegations have gone unrefuted
and uncontested. Therefore, the Panel is permitted to make all reasonable
inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true); see
also 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”).
Additionally, when Respondent fails to
submit a Response and its rights and interests are not apparent to the Panel,
it is presumed that Respondent lacks rights and legitimate interests in the
domain name. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the Panel to draw adverse inferences from Respondent’s failure to reply to
the Complaint); see also BIC
Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
Complainant’s Submission provides
uncontested circumstances that indicate Respondent attempted to transfer or
sell its interest in the domain name to Complainant’s representative.
Respondent’s willingness to transfer title of the subject domain name evidences
its lack of rights or legitimate interests in the domain name under Policy ¶
4(a)(ii). See Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use); see
also Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a domain name primarily for the purpose
of marketing it to the owner of a corresponding trademark).
Respondent has held the registration of
the domain name since March 16, 2001, over sixteen months. Respondent has yet
to develop a stated purpose or produce evidence suggesting it has made
preparations to use the website in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i). Respondent’s lack of use, taken
in conjunction with its attempted sale of the domain name registration,
suggests that Respondent registered the domain name primarily to profit from
its sale, which does not constitute a legitimate noncommercial or fair use of
the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where Respondent failed to submit a Response to the Complaint and had
made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering
the domain name is not sufficient to establish rights or legitimate interests
for purposes of paragraph 4(a)(ii) of the Policy”).
There is no evidence suggesting a
connection between Respondent and its <getronicsdecan.com> domain
name. Respondent is not an authorized representative of Complainant, nor is it
licensed to use Complainant’s GETRONICS or DECAN marks in a domain name.
Because Complainant’s mark has been registered in numerous jurisdictions,
represents a unique term and has established secondary meaning in the ICT
solutions industry, it is presumed that Respondent is not commonly known by the
<getronicsdecan.com> domain name pursuant to Policy ¶ 4(c)(ii). See
Victoria’s Secret v. Asdak, FA
96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent
was not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark); see also Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
Accordingly, the Panel determines that
Respondent does not have any rights or legitimate interests in the <getronicsdecan.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent is seeking to capitalize on
the notoriety of Complainant’s GETRONICS and DECAN trademarks by strategically
registering a combination of Complainant’s marks the day after Complainant’s
acquisition of Decan was announced. Complainant has provided unrefuted evidence
of circumstances that indicate Respondent registered the domain name primarily
for the purpose of selling or transferring the domain name registration to
Complainant. Respondent’s motivations to sell its rights in the domain name
evidence bad faith registration and use pursuant to Policy ¶ 4(b)(i). See
Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”); see also Cree, Inc. v. The Domain Name You Have
Entered is For Sale, FA 94790 (Nat. Arb. Forum May 25, 2000) (finding bad
faith where the Respondent purchased the domain names on the date of the
Complainant’s press release regarding a merger and business expansion).
Respondent has passively held the
domain name for over sixteen months. When considering the totality of
circumstances surrounding Respondent’s registration of the infringing domain
name, it is evident that Respondent has passively held the domain name in
anticipation of selling its
rights in the registration to Complainant without incurring the costs
associated with development of the website. Respondent’s actions represent bad
faith registration and use under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6,
2000) (finding that mere passive holding of a domain name can qualify as bad
faith if the domain name owner’s conduct creates the impression that the name
is for sale); see also DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
Accordingly, Respondent’s passive holding and attempted sale
of the domain name registration fulfills Policy ¶ 4(a)(iii)’s bad faith
requirement.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly,
it is Ordered that the <getronicsdecan.com> domain name
be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated:
August 20, 2002
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