Seagate Technology LLC v. Wang Zhanfeng
Claim Number: FA0601000635276
PARTIES
Complainant is Seagate Technology LLC (“Complainant”), represented by Johanna F. Sistek, of Dorsey & Whitney LLP, 555 California St., Suite 1000, San Francisco, CA 94104. Respondent is Wang Zhanfeng (“Respondent”), Tianhe Industrial Park, Guangzhou, Guangdong 510665, CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seagate-maxtor.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 24, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 27, 2006.
On January 24, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <seagate-maxtor.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, 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 February 1, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 21, 2006 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@seagate-maxtor.com by
e-mail.
A timely Response was received and determined to be complete on February
20, 2006.
A timely Additional Submission was received from Complainant on February
28, 2006 and has been accepted.
On February 24, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that the contentious domain name <seagate-maxtor.com>
should no longer be registered with Respondent but that it should be
transferred to Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to Complainant’s registered United States, foreign and European Community trademarks, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.
In support of its case on the first of these three elements,
Complainant maintains that the domain name <seagate-maxtor.com> is
confusingly similar to all of the trademarks referred to, because it consists
of the trademark SEAGATE and the name of the company Maxtor, which Complainant
had announced on the day that the domain name was registered that it was taking
over.
Complainant then contends, to establish the second element, that Respondent
has no rights or interests in the domain name because he has no legitimate
connection with the name, no trademark rights in SEAGATE or MAXTOR, no business
relationship with Complainant and is not making a legitimate noncommercial or
fair use of the domain name.
Finally, Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because he registered it on the same day that Complainant announced it was acquiring Maxtor, the domain name resolves to a website which is a combination of material from both of Complainant’s and Maxtor’s websites, creating the false impression that the website is affiliated with Complainant and also because Respondent is actually offering the domain name for sale to the public.
B. Respondent
Respondent accepts that adopting the two names Seagate and Maxtor in
the domain name ‘has induced infringement of the right of these two
companies…,’ which was a ‘mistake’ on his part. Thus, to make amends, he responded by removing the substantive
material from the website.
He also concedes that the initiating event in this matter was when it
came to his notice that Seagate was to acquire Maxtor. As he was an admirer of Maxtor products, he
decided to commemorate this event by registering a ‘similar domain name’ and to
use it to build up a hard-disk fans forum.
This, he claims, was essentially a personal matter.
However, as he was planning to go home for the Chinese Spring Festival,
he worked up a ‘framework’ website that drew on the products of Seagate and
Maxtor and posted on it the notice ‘This Domain For Sale!’ pending his return
from the Festival. He defends these
actions by saying that it is ‘common for individual websites’ to carry such an
offer of sale and that it is the wish of all webmasters that someone will so
recognize their work that they will offer to buy the domain name.
Accordingly, he denies that he registered the domain name in bad
faith. Indeed, he claims that he has
right on his side, as he was the first to register the name and that
Seagate-Maxtor is not yet a trademark.
Moreover, he has not ‘done anything Maleficent to Seagate and Maxtor
after I registered the domain name.’
All he has done is promote the brand and his own website.
Accordingly, he maintains that he should be permitted to keep the
domain name.
C. Additional Submission
In its additional submission Complainant says that there is no evidence
that Respondent was really going to set up a fans forum and that that the
evidence is to the contrary. It also
says that even if Respondent has removed the material on Seagate and Maxtor
from his website, there is no guarantee that it will not be returned if
Respondent retains the domain name.
Complainant also asserts that the invitation on the website ‘This Domain
for Sale!’ speaks for itself and means that that the Respondent’s intention all
along has been to sell the domain name, which is bad faith behavior.
FINDINGS
Complainant is a prominent United States company that was named Forbes
Magazine Company of the Year for 2006.
It has manufactured computer disk drives for data storage since 1980,
software for database management since 1995 and related products for many
years.
The Complainant owns a series of trademarks which are registered with
the United States Patent and Trademark Office, the essential details of which
are as follows:
SEAGATE TECHNOLOGY.
Reg No. 1,238,123, registered on May 17, 1983 for disk drive apparatus.
SEAGATE. Reg No.
1,269,032, registered on March 6,1984 for disk drive apparatus.
SEAGATE SOFTWARE.
Reg. No. 2,024,196, registered on December 17,1996 for computer software.
SEAGATE. Reg. No.
2,024,197, registered on December 17,1996 for computer software.
SEAGATE EXPRESS.
Reg. No. 2,689, 581, registered on February 25, 2005 for mail order and
telephone calalog services.
SEAGATE. Reg No.
2,407,743, registered on November 28, 2000 for various items of office
equipment.
SEAGATE &
Design. Reg No. 2,957,890, registered
on May 31, 2005 for computer peripherals and related products.
Complainant has also registered the trademarks SEAGATE and SEAGATE
TECHNONOLGY in at least 40 other countries and with the European Community
Trademark Office.
MAXTOR Corporation (‘Maxtor’) was founded in 1982 and is described on
its website as ‘one of the world’s largest suppliers of hard disk drive storage
products and solutions.’
Complainant does not own the registered trademark MAXTOR, which is
owned by Maxtor, but as Complainant intends to acquire that company it will in
the normal course of events also acquire the trademark when the acquisition is
completed.
On December 21, 2005, Complainant issued a News Release to the effect
that it had entered into an agreement with Maxtor Corporation which had been
unanimously approved by the directors of both companies and under which
Complainant would in effect acquire Maxtor.
The result of the transaction would be that the shareholders of
Complainant would own 84% and the shareholders of Maxtor would own 16 % of the
combined company.
On the same day, December 21, 2005, Respondent registered the domain
name <seagate-maxtor.com>.
The Respondent also registered <newmaxtor.com> at the same time.
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.
The Panel
will now proceed to deal with each of these requirements in turn.
Respondent concedes that adopting the two names Seagate and Maxtor in the domain name ‘has induced infringement of the right of these two companies…’ and that he has created a ‘similar domain name.’ However, the Panel must still make a finding whether the Complainant has proved each of the three requirements set out above.
The Panel finds that the domain name <seagate-maxtor.com>
is confusingly similar to each and every of the United States registered
trademarks set out above and in the names SEAGATE, SEAGATE TECHNOLOGY, SEAGATE
SOFTWARE, SEAGATE EXPRESS and SEAGATE & Design and also to the foreign and
European Community trademarks in the names SEAGATE and SEAGATE TECHNOLOGY.
That is so because the first and most
dominant part of the domain name consists of the prominent trademark SEAGATE
. The domain name is clearly intended
to invoke that trademark and the prominent company that owns the trademark and
carries the same name, i.e. Complainant.
That is also the case with respect to the other SEAGATE trademarks, for
they also clearly invoke the parent Seagate name and thus the other trademarks.
Secondly, it is true that the domain name
also includes the name ‘Maxtor’ and it might be said that this so dilutes the presence
of the Seagate name in the domain name that it is not similar to the SEAGATE
trademarks at all. The Panel does not
accept that argument. The Panel must
take notice of the proven fact that the domain name was registered on the same
day that the Complainant announced that it was taking over Maxtor and that
there would be henceforth be a ‘combined company.’ Accordingly, the presence of Maxtor in the domain name
strengthens the similarity to the trademarks rather than weakens it, for it is
an announcement that the SEAGATE of the domain name is the same SEAGATE that
had just announced it was acquiring Maxtor.
This approach in cases where two companies
are amalgamating and a third party has registered both company names in a
combined domain name at the time of the announcement is now well
established. For example, in Vivendi S.A. v. Yu Fu Zhao,
D2000-0717 (WIPO Dec. 4, 2000),
where Vivendi and Seagram were to amalgamate under the name Vivendi Universal
and the respondent had registered the domain name
<vivendi-universal.com>, the Panel was able to say:
‘Opportunistic combinations of two famous
marks, registered as domain names shortly after a merger announcement, have
been discouraged by WIPO Panelists in Pharmacia
& Upjohn AB v. Monsantopharmacia.com Inc. (D2000-0446) and in respect
of other marks owned by the present Complainants in Vivendi S.A. v. CIPC Net (D2000-0685).’
More recently, in Sanofi-Synthelabo
v. On,
D2003-0871 (WIPO Jan. 16, 2004), and Aventis
SA v. On, D2003-0899 (WIPO Jan. 16, 2004),
a similar decision was reached and the panel said:
‘A number of other panelists have come to a
similar conclusion in cases of hypothetical or not completed merger between two
companies (See Vivendi S.A., The Seagram
Company Ltd., Joseph E. Seagram & Sons,
Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. CPIC NET, WIPO Case
No. D2000-0685; AT&T Corp v. Beomjoon Park, WIPO Case No. D2001-0133; Viacom International Inc. v Beomjoon Park, WIPO Case No.
D2001-0220; L'Air Liquide v. MIC, WIPO
Case No. D2001-1246), as well as in cases of actual merger or restructuring (Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case
No. D2000-0446; Repsol YPF, SA v. COMn.com, WIPO Case No. D2001-0741; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142; Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No.
D2002-0118; Konica Corporation, Minolta
Kabushiki Kaisha aka Minolta Co., Ltd. v.
IC, WIPO Case No. D2003-0112).’
In any event, it is also well - established now that a trademark may be
protected in UDRP proceedings even although it is included merely as part only
of a combined domain name which includes other trademarks. Thus, in G.D.
Searle & Co. v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002), the
domain name was comprised of a series of trademarked drugs, namely
<viagra-xenical-celebrex-propecia-meridia-zyban.com>. However,
Complainant’s trademark was for only one of these, the single drug celebrex and
the other drugs were under trademark to other companies. The panel found that:
‘Respondent’s use of numerous marks that represent various entities
introduces a relatively new complexity to the Policy ¶ 4(a)(i) analysis.
However, Complainant has the right to protect its trademark whether standing
alone, or included in a string of industry-related marks. Respondent’s
inclusion of other drug-related marks only increases the likelihood that
confusion will result from use of the domain name.’
A similar result was reached in G.D.
Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum
June 3, 2002) (“The Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim.”).
Accordingly, not only is the domain name in
the present case similar to the trademarks, but also it is confusingly so. That is so because the objective bystander
could not draw any inference other than that, as the two companies were
combining, the contentious domain name must be related to or associated with
the same SEAGATE of the trademarks, which of course it is not. Indeed, the Panel can only draw the
inference that Respondent wanted the consumer to think that in view of the
announcement of the takeover, his domain name would henceforth be the domain
name of the combined company.
Complainant has also proved that it has
rights in the trademarks relied on and has therefore satisfied all of the
requirements of paragraph 4(a)(i) of the Policy.
Although the onus of proof is on Complainant
to prove all of the elements of its case on the balance of probabilities, it is
now well established that if Complainant makes out a prima facie case under paragraph 4(a)(ii) of the Policy, the burden
of proof shifts to Respondent to show that it does have rights or legitimate
interests in the domain name. See Do The Hustle,LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21,2000), and Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001).
The Panel finds that Complainant has made out
a prima facie case on this
issue. It has done this by submitting
and verifying to the best of its knowledge that Respondent is an individual who
clearly is not named ‘Seagate-Maxtor,’ ‘Seagate’ or ‘Maxtor,’ has no trademark
rights in either SEAGATE or MAXTOR, has no license or authority to use the
SEAGATE name and is not making a legitimate noncommercial or fair use of the
domain name.
That being so, it is then necessary to see if
Respondent has rebutted this prima facie
case and shown that he does have rights and legitimate interests in the domain
name.
By virtue of paragraph 4(c) of the Policy,
it is open to a respondent to establish its rights or legitimate interests in
the domain name by showing, inter alia,
any of the following elements:
‘(i) before
any notice to you [Respondent] of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(ii) you
[Respondent] (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark or
service mark rights; or
(iii)
you [Respondent] are making a legitimate noncommercial 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.’
From the totality of Respondent’s submission
it is clear that he would strongly disavow any intention to bring himself
within subparagraph (i), for he maintains in his submission that he had no
intention of using the domain name to sell goods or services, but rather that
he wanted to set up a hard-disk fans club.
It is equally clear that he would not claim to bring himself within
subparagraph (ii), for he is not commonly known by the domain name. His case is really that he comes within
subparagraph (iii), on the ground that what he was doing was making a
legitimate non-commercial or fair use of the domain name. The legitimate non-commercial or fair use
that he relies on is the establishment of the hard disk fans club. Respondent says he was fond of Maxtor
products and that when he heard of the amalgamation of the two companies, he
decided to commemorate this event by registering a similar domain name, prepare
his plans for the fans club and also register <newmaxtor.com>. He also says that this was done out of
‘personal interests’ and that he has not done anything of a maleficent nature
to Seagate or Maxtor and that indeed he has promoted their brands.
It is possible that an active non-commercial
fan site may constitute ‘a legitimate noncommercial or fair use of the domain
name’ and there are cases where those requirements have been made out. The present case, however, is clearly not
such a case and the Panel is unable to find that Respondent was making or
intended to create a hard-disk fans club devoted to the works of either Seagate
or Maxtor or hard-disks in general.
That is so for several reasons.
First, on the totality of the evidence, the
Panel does not accept that this is what Respondent was doing or intended to do. The fact that Respondent offered the domain
name for sale almost as soon as he registered it is completely contradictory to
any notion that his real objective was to establish a fans forum. Indeed, there is nothing on the website
constructed by Respondent to enable it to be used as a forum or to enable
aficionados to post their comments.
Moreover, the fact that Respondent offered the domain name for sale and
so promptly after he registered it, is itself evidence that he was not making a
legitimate noncommercial or fair use of the domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat.
Arb. Forum May 27, 2003), and Kinko’s
Inc. v. eToll,Inc., FA 94447 (Nat. Arb. Forum May 27, 2000).
Secondly, the evidence shows that the Respondent
had not established a fan forum or club; a fan club must contain at least some
material tending to show matters of interest to admirers and devotees of
whatever the particular cause may be; the material that the Respondent put on
his website was material taken straight from the websites of both Seagate and
Maxtor, giving the impression and, in the opinion of the Panel, intending to
give the impression that it was the site not of admirers or fans of Seagate,
Maxtor or hard-disks, but that it was the joint site of the proposed
amalgamated Seagate and Maxtor company.
Thirdly, as was pointed out in Fielding
v. Corbert, D2000-1000 (WIPO Sept. 25, 2000), the Policy makes a
distinction between ‘demonstrable
preparations to use’ a domain name for the bona
fide offering of goods and services under paragraph 4(c)(i) and the actual
‘making’ of the legitimate noncommercial fair use of the domain name under
paragraph 4(c) (iii). A respondent who
relies on the former subparagraph need only show preparations. A respondent who relies on the latter
subparagraph must show an actual and current use of the site for a fan
club. Applying that principle to the
present case, it is clear that Respondent cannot succeed on this point, as at
best he can only show that his ‘plan was to build up’ the fan site at some time
in the future, but that he deferred it and left his work on the site to attend
the Chinese Spring Festival, leaving the site exposed to the world not as a fan
site, but as one that purported to be a combination of the two official Seagate
and Maxtor sites and on which the domain name was advertised for sale.
Fourthly, to establish that a site is a fan
site, it must be identified as such and be clearly distinguished from an
official site; see, for example, Estate of Gary
Jennings v. Submachine, D2001-1042 (WIPO, Oct. 25, 2001), where the panel observed, ‘Respondent clearly
indicates on its web site that "GaryJennings.com is not affiliated or
endorsed by Gary Jennings" and is therefore not misleadingly diverting consumers.’
There was no
such disclaimer in the present case and no indication that Respondent intended
to include one.
The Panel therefore does not accept the
Respondent’s principle contention that he was, within the meaning of paragraph
4(c) (iii) of the Policy ‘…making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers ….’
Other
matters relied on by the Respondent
In addition to relying on the specific circumstances set out in paragraph
4(c) of the Policy, Respondent has relied on other matters, as he is entitled
to do, to satisfy the requirement that he has rights or legitimate interests in
the domain name. The Panel is anxious
to ensure that all of Respondent’s arguments have been properly addressed and
it will therefore now deal with these additional matters that Respondent has
raised.
First, Respondent relies on the fact that when he realized he had
infringed the rights of Seagate and Maxtor, he sought to rectify his mistake
and removed the contents of the website.
But, as Complainant says, if Respondent is allowed to succeed in these
proceedings on that ground, there is nothing to stop him from replacing the
same material when the proceedings are over and continuing with the same
confusion that is presently caused by using Complainant’s trademark as a domain
name. The point made by Respondent is
therefore not a ground for establishing a right or legitimate interest in the
domain name.
Secondly, Respondent says in effect that he should not be disadvantaged
by the fact that he posted a banner on his website carrying the invitation
‘This Domain Name For Sale!,’ for all webmasters aim for this ultimate accolade
when their innovation is recognized and their domain name is bought. Apart from the doubtful proposition that the
domain name belongs to the webmaster, the Panel does not accept that this
submission is logical; it would seem to be contrary to the real interests of
the owner of the domain name who would not want to build up a prominent domain
name successfully promoting its business, only to sell it. It is certainly not a basis for creating a
legitimate right or interest in anyone who improperly takes another party’s
trademark and uses it as a domain name without any authority to do so, which is
essentially what has happened in this case.
Thirdly, Respondent says that Complainant
registered <seagatemaxtor.com> and could have registered <segate-maxtor.com>,
but did not do so. Respondent therefore
argues that he should be entitled to keep <seagate-maxtor.com> on
the ‘first register, first gain’ principle.
The Respondent, however, overlooks the fact that the dispute must be
resolved according to the Policy, that he agreed to this when he registered the
domain name and that nothing in the principle he cites permits the unauthorized
use in a domain name of another party’s identical or confusingly similar
trademark. That is so, even if the
respondent is the first person to do so.
Towards the end of his Response, Respondent
submits that although SEAGATE and MAXTOR are registered trademarks of Seagate,
SEAGATE-MAXTOR is not. The inference appears to be that there is therefore is
nothing to prevent Respondent from using the combined names as his domain name.
It may be that this argument is addressed to
paragraph 4(a)(i) of the Policy, i.e., that it is an argument that Respondent
has not registered a domain name that is identical or confusingly similar to a
trademark in which Complainant has rights, for Complainant has no rights in a
trademark in the name SEAGATE -MAXTOR.
If that is the argument, it is not correct,
for the question is whether the domain name is identical or confusingly similar
to a trademark in which Complainant has rights. It has long been held in UDRP proceedings that a complainant may
rely on any trademark in which it has rights, provided that the trademark it
relies on is one that is either identical to or confusingly similar to the
contentious domain name. The Panel has
held that the domain name is confusingly similar to several such trademarks,
namely the series of SEAGATE trademarks, not to a trademark in the name
SEAGATE-MAXTOR. The domain name is not
identical to any of the trademarks relied on and Complainant has not submitted
that it is. It submitted that the
domain name is confusingly similar to a series of trademarks and the Panel has
found that this is so.
It may be, however, that the argument is
addressed to paragraph 4(a)(ii) of the Policy, that is, that as there is no
SEAGATE –MAXTOR trademark, Respondent has the right to register the same name
as a domain name. That argument
however, is also not correct. A
complainant must first show that it has a relevant trademark, which in the
present case it has done. It is then
obliged to show that the respondent has no rights or legitimate interests in
the domain name. The fact that the
domain name does not offend against another trademark, or against another name
that is not a trademark, does not absolve the respondent and it does not
absolve him in the present case.
For all of these reasons, Complainant has
shown that Respondent has no rights or legitimate interests in the domain name.
Complainant must prove on the balance of
probabilities both that the domain name was registered in bad faith and that it
is being used in bad faith. See Telstra
Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000).
Further guidance on how to implement this
requirement is to be found in paragraph 4 (b) of the Policy, which sets
out four circumstances, any one of which is taken to be evidence of the
registration and use of a domain name in bad faith if established.
The four
specified circumstances are:
‘(i) circumstances indicating
that the respondent has registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of the respondent’s documented out-of-pocket costs directly related to
the domain name; or
(ii) the respondent has registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that Respondent has engaged in a pattern of
such conduct; or
(iii) the respondent has
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant relies on each of these grounds. It says, first of all, that the evidence shows that Respondent registered the domain name with the intention of selling it to Complainant. The Panel accepts that argument and finds that Respondent’s conduct brings him within the provisions of paragraph 4 (b)(i) of the Policy. The Panel is obliged to reach a conclusion from the evidence before it on what probably happened and in this case the Panel has no doubt on the balance of probabilities that Respondent registered the domain name with the intention of selling it to Complainant. That conclusion is suggested, first, by the close proximity between the time of the announcement of the amalgamation of Seagate and Maxtor and the time when Respondent registered the domain name, i.e. on the same day. Secondly, the same conclusion is suggested by the fact that Respondent created a website on which he posted the banner advertisement ‘This Domain Name for Sale!’ That can only mean that the domain name was available for sale either to Complainant or to others, including competitors of Complainant. The Panel must also draw the inference that Respondent was not doing this merely to recover the out-of-pocket costs he had just incurred relating to the registration, but that his real objective was to sell the domain name for valuable consideration in excess of those costs, thus bringing the situation squarely within the provisions of paragraph 4(b)(i) of the Policy. That conclusion is re-enforced by the unpersuasive explanation given by Respondent for posting the advertisement, namely that he really intended to build a fan forum, that he postponed this due to the imminence of the Chinese Spring Festival and that he posted the advertisement simply as an interim measure on his ‘framework website’ pending his return from the Festival.
The Panel finds this explanation unpersuasive because the adoption of an essentially commercial activity is inconsistent with the essentially informative and non-commercial nature of a fan site.
On the totality of the evidence, the Panel finds that Respondent intended to sell the domain name to Complainant and was laying the foundations for doing so. Such conduct constitutes bad faith and has been held to be so. See Am. Online, Inc., v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 ( Nat. Arb. Forum Mar.16, 20000), and Am. Anti-Vivisection Soc’y v. “Infa dor Netr” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000).
That finding means that at least one of the circumstances specified in paragraph 4(b) has been made out.
Accordingly, it is not strictly necessary to go on to consider whether the facts also bring the case within any of the other provisions of paragraph 4(b) of the Policy. However, it is very clear to the Panel that the facts also bring this matter within paragraph 4 (b)(iv). That is so because Respondent has used the domain name to attract Internet users to his website by creating the likelihood of confusion with the SEAGATE trademarks as to the affiliation of the site, i.e. confusion as to whether it is an official SEAGATE site, a confusion encouraged by including on it authentic SEAGATE material taken from the official site. Moreover, the Panel must draw the inference that this was done intentionally and for commercial gain, namely the commercial gain to be derived from selling the domain name. Such conduct clearly constitutes bad faith and has been held to be so. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003).
As the case therefore comes
within at least two of the criteria set out in paragraph 4 (b) of the Policy,
Complainant has also made out this element of its case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
THE ORDER TO BE MADE
Complainant has asked that the domain name be transferred to itself and
the Panel will make that order. Before
doing so, however, the Panel is obliged to take note of the fact that
Respondent’s domain name <seagate-maxtor.com> incorporates not only Complainant’s
trademark SEAGATE, but also the trademark MAXTOR, which is owned not by
Complainant but by Maxtor Corporation.
The question therefore is whether there is any problem in transferring
to a complainant a domain name that includes another trademark that is not
owned by the complainant.
In this regard and in the interests of consistency in decisions, it
should be noted that in G.D. Searle &
Co. v. Martin Mktg., (supra)
under the heading ‘PROCEDURAL
ISSUE – MARKS OF MULTIPLE PARTIES,’ the
panel said:
‘Due to practical difficulties
inherent in the UDRP, cooperative complaint initiation is unlikely and
unfeasible. Because Complainant initiated
this dispute prior to any other interested party it has the opportunity to
acquire the domain name, while seeking to protect its CELEBREX mark from an
infringing use. However, due to the procedural complexities presented by the
current dispute the following issue must be addressed: that Complainant seeks
acquisition of the subject domain name in good faith, and will forfeit its
interest in the contested domain name if the other represented marks are
infringed upon following a transfer of the domain name registration to
Complainant.’
In the present case, there is only one other trademark owner concerned
with the consequences of a transfer to Complainant, namely Maxtor Corporation,
rather than several as was the case in G.D.
Searle & Co. v. Martin Mktg., (supra).
Maxtor Corporation is in the process of amalgamation with Complainant
with the unanimous agreement of its directors.
In the normal course of events Complainant will become the owner of the
MAXTOR trademark, even if it has not become the owner already. The Panel is therefore confident that no
harm will be done by transferring the domain name to Complainant, that it is
the best and most practical order to make and that the problems envisaged by
the panel in G.D. Searle &
Co. v. Martin Mktg., (supra),
as conceivably arising in a situation such as that case, will not arise as a
result of the present
proceedings or as the result of the order that
the Panel intends to make.
Accordingly, it is Ordered that the <seagate-maxtor.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 10, 2006
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