NATIONAL ARBITRATION FORUM
DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION
Entercolor Technologies Corporation
Gigantor Software Development, Inc.
File Number: FA 0002000093635
GIGANTOR is a name conceived in 1964 by Fred Ladd, president of the Complainant, Entercolor Technologies Corporation. It is the name of a giant robot featured in a series of fifty-two half-hour children's animated television programs imported from Japan. It was distributed to television stations in the United States, and copies are being sold through a home video distributor. The GIGANTOR theme song is licensed to TVT Records and Rhino Records. There is a music video called GIGANTOR featuring Drew Barrymore.
The Complainant is the owner of a federal trademark for GIGANTOR and the series GIGANTOR is protected by a federal copyright.
The Respondent describes itself as a software consulting business. It registered the name GIGANTOR.COM in1995.
The Complainant asserts that the Respondent intentionally and in bad faith registered domain names identical to the Complainant's trademarked name to attract users to the Respondent's web site. Internet users are likely to believe that the Respondent's services are offered by, endorsed by, sponsored by, or associated with the Complainant, it asserts.
The Respondent asserts that it had never heard of the Complainant, never heard of the services provided by the Complainant, and had no knowledge of the services provided by the Complainant. It has been using the domain names since 1995 and denies that it registered them with the intent to transfer them to the Complainant, to any competitor of the Complainant, or to any third party. It provides services in a completely different market from the Complainant and has no interest in attracting Internet users who are interested in the Complainant.
There are several aspects of the Respondent's response that are troubling. Even though the Respondent registered the domain name GIGANTOR in 1995, it has never constructed a web site. The corporation GIGANTOR.COM was incorporated after three letters were sent to the Respondent informing it of the conflict over the name GIGANTOR. The Respondent states that it was unaware of the Complainant's existence until this complaint was filed, but, as noted, Respondent was sent three letters in 1999 informing it of the problem with GIGANTOR.
There is little in the response that reflects just what the, if any, the Respondent actually conducts. It is merely identified as being in the "software consulting business". No particular services are described. No customers are identified. Finally, given the unusual and seemingly unique name, GIGANTOR, it seems improbable that it was created without a knowledge of the name derived from the Complainant's character.
Under the ICANN Uniform Domain Dispute Resolution Policy, the Complainant must prove each of these three elements:
The Respondent's domain names are identical to the Complainant's trademark. It is not clear, however, that the Respondent has no right or legitimate interest in the domain names. It's assertion that it has been using the name in its business for several years is not rebutted. Moreover, though there are the troubling aspects of the response mentioned above, the Complainant has not shown that the Respondent registered the domain names or is using them in bad faith. The Respondent's business, whatever it may be, is not in any way similar to the Complainants. There is no indication that the Respondent registered the name with the intent to transfer it to the Complainant, to prevent the Complainant from using the domain name, to disrupt the Complainant's business, or to attract Internet users through confusion. While its likely that the Respondent knew of the name GIGANTOR from the Complainant's character, that is insufficient under the ICANN policy to order a transfer of a domain name.
The Complainant's request that the domain names GIGANTOR.COM and GIGANTOR.NET be transferred to it is DENIED.
Robert S. Brandt
Date: March 21, 2000