Gateway, Inc. v. Internet Services
Claim Number: FA0506000491742
PARTIES
Complainant
is Gateway, Inc. (“Complainant”), represented
by Robert W. Sacoff, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000,
Chicago, IL 60606. Respondent is Internet Services (“Respondent”), PMB
330-739, 1733 H Street, Blaine, WA 98230.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <gateway.biz>,
registered with Tucows Inc.
PANEL
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.
Honorable
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 8, 2005.
On
June 7, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
(“NAF”) that the domain name <gateway.biz>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
June 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 30,
2005 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@gateway.biz by e-mail.
A
timely Response was received on June 24, 2005.
The Response, however, does not comply with the requirements set forth
in UDRP Rule 5 and NAF Supplemental Rule 5.
On July 11, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
(2) Since at least as early as 1986, long prior to Respondent’s
registration of the Infringing Domain Name, Gateway adopted, and has
continuously used and promoted since that adoption, a family of marks revolving
around the central term GATEWAY (the "GATEWAY Marks") in connection
with computers and computer peripherals products and related services.
(3) Gateway also maintains a significant Internet presence through
its web site at <gateway.com>, which provides information about Gateway
and its computers and computer-related products and services. Gateway also operates a website at
<gatewaybiz.com>, which provides targeted information and resources to
its small business customers.
(4) As a result of Gateway’s investment of its effort, money,
skill and other resources, Gateway’s GATEWAY Marks are widely recognized as
indicating goods and services emanating from Gateway, and have become famous
trademarks.
(5)
Gateway owns valid and subsisting federal
trademark registrations for the GATEWAY Marks.
Each of these registrations is valid, subsisting and owned by
Gateway. Moreover, Reg. Nos. 2,173,818
and 2,073,470, are incontestable in accordance with 15 U.S.C. §§ 1065 and
1115(b), and constitute conclusive evidence of the validity of the GATEWAY
Marks, Gateway’s ownership of the GATEWAY Marks, and its exclusive right to use
the GATEWAY Marks for the goods and services specified in the registrations.
(6) In addition, Gateway has used the GATEWAY Marks on a worldwide
basis and has registered the GATEWAY Marks or applied for registration in
several foreign jurisdictions.
(7)
Gateway has invested many millions of
dollars in promoting the GATEWAY Marks
and has sold many billions of dollars in products and services under the
GATEWAY Marks.
(9) The fame and reputation symbolized by the GATEWAY Marks have
been developed, in part, through Gateway’s extensive efforts to rigorously
protect its GATEWAY Marks.
(10)In sum, Gateway’s GATEWAY Marks are
exceedingly well-known and famous, and recognized in the United States and
around the world as an indication of products and services emanating from
Gateway.
B. Respondent
(1) In its Response to the Complaint in
this proceeding, Respondent does not dispute that Complainant owns valid rights
in its GATEWAY Marks or that the <gateway.biz> domain name (the
"Infringing Domain Name") is identical or confusingly similar to
those trademarks. Instead, Respondent
claims that it registered the Infringing Domain Name for use in driving
Internet traffic to its Creation Science web site located at
<dinosaurs.info>.
(2) All Respondent has shown is that it
registered the Infringing Domain Name, and contacted NAF by e-mail thirteen
(13) days after receipt of official notification of the proceeding to present
its justification, namely, the development of an online Creation Science web
site for which the Infringing Domain Name will be used solely to redirect
Internet traffic to a web site located at <dinosaurs.info> .
(3) Respondent has admitted that it
registered other domain names, including the Infringing Domain Name, for the
sole purpose of using them to redirect Internet traffic to the
<dinosaurs.info> web site Respondent is apparently developing.
(4) Respondent also claims that the
reason some of these domain names, including the Infringing Domain Name, point
to the web site located at <aaces.com>, is because the "domains had
to be used for business" as "required by the .biz
registry." Respondent's web site
at <aaces.com> features and sells a range of non-Gateway computer-related
products and services, including domain name hosting and Internet
services.
(5) NAF indicated to Respondent in an
e-mail dated June 24, 2005 that Respondent's e-mail of June 23, 2005 was a
non-compliant Response. Nevertheless,
Respondent confirmed to NAF in an e-mail dated June 24, 2005 that the earlier
e-mail should be deemed its complete and official response in this
proceeding.
DISCUSSION
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.
FINDINGS
Procedural
Issue
Respondent submitted its Response in electronic form
on June 23, 2005. UDRP Rule 5(b)
states, “The response shall
be submitted in hard copy and (except to the extent not available for annexes)
in electronic form . . .” In addition,
Rules 5(b)(i)-(ix) mandate further information to be included in responses
including, among other things, a signed certification that the information
included in a response is complete and accurate.
Respondent has failed to provide a hard
copy of its Response, to certify the Response, and to address other mandates
provided for under Rule 5(b). In its
discretion, the Panel may choose to either disregard or accept the Response,
despite its noncompliance with the UDRP Rules.
See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar.
4, 2003) (holding that the respondent’s failure to submit a hard copy of the
response and its failure to include any evidence to support a finding in its
favor placed the respondent in a de facto default posture, permitting
the panel to draw all appropriate inferences stated in the complaint); see
also Schott Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing
not to consider the response in light of formal deficiencies). We will consider Respondent’s Response.
Complainant
claims rights in the GATEWAY and GATEWAY-related marks, pursuant to Policy ¶
4(a)(i). Complainant bases those rights
on numerous trademark registrations for those marks with the U.S. Patent and
Trademark Office. The Panel finds that
Complainant has established rights in the GATEWAY marks as the result of its
federal registrations for the marks. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption.).
The
Panel also finds that the <gateway.biz> domain name is identical
to Complainant’s GATEWAY mark because the domain name incorporates the entire
mark in the second-level domain without modification. The addition of generic top-level domains are insignificant under
Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level
domain is without legal significance); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
Complainant argues that Respondent has not used the
disputed domain name in connection with a bona fide offering of
goods or services or a legitimate noncommercial or fair use, pursuant to Policy
¶¶ 4(c)(i) and (iii), because at one time, Respondent pointed the domain name
to a website which sold “non-Gateway computer-related products and services.” Complaint at ¶ 32. The Panel finds that Respondent used the
domain name to market products that competed with Complainant’s goods or
services sold under the GATEWAY-related marks, and concludes that Respondent is
not using the disputed domain name in connection with a bona
fide offering of goods or services, pursuant to Policy ¶ 4(c)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that the respondent’s appropriation of the complainant’s mark to
market products that compete with the complainant’s goods does not constitute a
bona fide offering of goods and services); see also Clear Channel
Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003)
(finding that the respondent, as a competitor of the complainant, had no rights
or legitimate interests in a domain name that utilized the complainant’s mark
for its competing website); see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to the complainant’s
mark and that the respondent’s use of the domain names to sell competing goods
was illegitimate and not a bona fide offering of goods).
Complainant
further contends that Respondent is not making a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is not
authorized to use Complainant’s GATEWAY mark.
The Panel finds that Respondent would not have chosen the domain name
but for Complainant’s mark and Respondent is seeking to create an impression of
an association with Complainant, and concludes that Respondent is not making a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See
State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept.
27, 2000) (“[U]nauthorized providing of information and services under a mark
owned by a third party cannot be said to be the bona fide offering of goods or
services.”); see also Telstra
Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that
the respondent lacked rights and legitimate interests in the domain name
because the respondent was not authorized by the complainant to use its
trademarks and the mark was distinct in its nature, such that one would not
legitimately choose it unless seeking to create an impression of an association
with the complainant).
The
Panel finds that Respondent is not commonly known by the <gateway.biz>
domain name because Respondent is merely using the domain name to “drive
more traffic to the Creation Science website . . . .” Response at 1. See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
Complainant
argues that Respondent registered and used the disputed domain name in bad
faith by “registering the Infringing Domain Name and using it to direct
Internet users to competing goods and services. Respondent’s conduct demonstrates bad faith under Paragraphs
4(a)(iii) and 4(b)(iv) of the Policy.” Complaint
at ¶ 34. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as Cthe
complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629
(WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent initially used the domain name at issue to resolve to a website
offering similar services as the complainant into the same market); see also
TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of the complainant).
Furthermore,
Complainant contends that Respondent registered and used the disputed domain
name in bad faith because Respondent had actual knowledge of Complainant’s
rights in the GATEWAY mark at the time of registration. See Yahoo!
Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for the respondent’s
registration of the <yahooventures.com> domain name); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse.").
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gateway.biz>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: July 18, 2005
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