Cisco Systems,
Inc. v. Geonill Cha
Claim Number: FA0108000099594
PARTIES
Complainant is Cisco Systems, Inc., San Jose, CA (“Complainant”) represented by Rochelle D. Alpert, of Brobeck, Phleger & Harrison LLP. Respondent is Geonill Cha, Songnae-Dong, Sosa-Gu, South Korea (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <ciscosystems.net>, registered with Hangang Systems, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint in both English and Korean to the National Arbitration Forum (the “Forum”) electronically on August 29, 2001; the Forum received a hard copy of the Complaint on August 29, 2001.
On August 29, 2001, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name <ciscosystems.net> is registered with Hangang Systems, Inc. and that Respondent is the current registrant of the name. Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, Inc. Korean language 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 August 31, 2001, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2001 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@ciscosystems.net 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.
On October 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as 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 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language claim and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant urges the following:
1. The <ciscosystems.net> domain name is identical to Complainant's CISCO SYSTEMS federally registered mark.
2. Respondent has no rights or legitimate interests in respect to the <ciscosystems.net> domain name.
3. Respondent registered, passively held, and attempted to sell the <ciscosystems.net> domain name in bad faith.
B. Respondent did not file a response in this proceeding.
FINDINGS
Since 1984, Complainant and its affiliated entities have used the CISCO SYSTEMS mark in relation to Internet networking and a wide variety of goods and services it provides internationally. Complainant has invested significantly in the promulgation of the mark by advertising and promotion of its products worldwide.
Complainant's CISCO SYSTEMS mark is protected by numerous U.S. Trademark registrations dating back to 1984. Complainant also owns various international trademark registrations throughout Europe, Asia, South America, Latin America, Australia and Canada.
Complainant uses and owns the rights to several Internet domain names around the world that are comprised of Complainant's CISCO SYSTEMS name and marks including <ciscosystems.com>.
Respondent registered the <ciscosystems.net> domain name on February 13, 2001. Respondent has not used the domain in relation to any bona fide offering of goods or services. Respondent is not commonly known by CISCO SYSTEMS. Respondent has offered the domain name for sale to the Complainant for US$8000, a price in excess of Respondent's out-of-pocket costs for the domain's registration and use.
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.
Paragraph 4(a) of the Policy requires that 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. 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
established that it has rights in the CISCO SYSTEMS mark through its
longstanding, extensive, continuous and worldwide use, as well as its federal
and international registrations of the mark.
Furthermore, the <ciscosystems.net> domain name is
identical to the Complainant's mark in that the disputed domain name merely
adds a top level indicator to the Complainant's mark. It is well established that the addition of a top level indicator
such as ".net" or ".com" does not defeat a claim that a
domain name is identical to or confusing similar to another’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “net” or “com” does not
affect the domain name for the purpose of determining whether it is identical
or confusingly similar); see also The Fed’n of Gay Games, Inc. v. Hodgson &
Scanlon, D2000-0432 (WIPO June
28, 2000) (finding that the domain name <gaygames.com> is identical to
Complainant's registered trademark GAY GAMES).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established that it has rights to and legitimate interests in the mark contained in its entirety in the domain name registered by Respondent. Respondent has shown no such interests and the Panel has the discretion to find that Respondent has no rights or legitimate interests in the disputed domain name where Respondent fails to submit a response. 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, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant and its allegations in the proceeding. 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”).
Respondent has shown no rights or legitimate interests in respect to the disputed domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent acted in bad faith in registering and holding the domain name in issue passively before offering it for sale to Complainant at a consideration in excess of expected costs of registering the domain name. Respondent's registration and passive holding of the <ciscosystems.net> domain name supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).
Furthermore, Respondent’s offer of the domain name for sale to the Complainant for a price that does not reflect the costs incurred to register and use it also may be taken to be evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <ciscosystems.net> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 18, 2001.
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