юридическая фирма 'Интернет и Право'
Основные ссылки











Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'



Rambler's Top100



Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway, Inc. v. James Cadieux

Case No. D2000-0198

 

1. The Parties

Complainant is Gateway, Inc., a corporation incorporated under the laws of the State of Delaware, with a principal place of business at 610 Gateway Drive, North Sioux City, South Dakota 57049, USA.

The sole party Respondent properly named in this proceeding is the individual James Cadieux of 2000 Columbus Ave., Bay City, MI 48706.

The Panel finds that the holder of record of the registration of the domain name "pcgateway.com" has not properly been named as a party Respondent in this proceeding. Discussion of this matter will be provided below in Section 6.A. of this Decision.

 

2. The Domain Name(s) and Registrar(s)

Paragraph 8 of the Complaint says "This dispute concerns the domain names ‘pcgateway.com’ and ‘pcgateway.net’." Since the holder of record of the registration of the domain name "pcgateway.com" is not properly a party Respondent in this proceeding, the Complaint is dismissed insofar as it relates to "pcgateway.com". This dismissal is without prejudice to the bringing of the proper complaint seeking relief as to "pcgateway.com." Further discussion of the dismissal will be provided below in Section 6.A. of this Decision.

In view of the foregoing partial dismissal, this Decision will address substantively only the issues pertaining to the "pcgateway.net" registration.

The registrar with which this domain name is registered is:

Network Solutions
505 Huntmar Park Drive
Herndon, VA 20170
Phone: (703) 742-0400

 

3. Procedural History

The Complaint submitted by Gateway, Inc. was received by e-mail on March 23, 2000, and in hardcopy on March 24, 2000, by the WIPO Arbitration and Mediation Center (the "Center").

On March 24, 2000, the Center sent to the Registrar a request for verification of registration data. In the Panel’s view, this request reflects confusion attributable to Complainant’s misplaced attempt to include the "pcgateway.com" registration in this case in spite of Complainant’s own recognition that PC Gateway, Inc., not the Respondent James Cadieux, was shown on the WHOIS report as the registrant of "pcgateway.com". In particular, the Center’s request to the Registrar says:

"The Complaint has been filed against the person/entity identified below (Respondent):

PC Gateway, Inc.

James Cadieux"

The Center’s communication to the Registrar also said that the Complaint "relates to" both of the domain names "pcgateway.com" and "pcgateway.net". One specific request was that the Registrar "confirm that the Respondent is the current registrant of the domain name(s)."

At this point, it is useful to note that the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") define "Respondent" as meaning "the holder of a domain-name registration against which a complaint is initiated." The term "holder" is not the subject of an explicit definition. However, it is clear from Paragraph 2.(a)(I) that a "holder" is intended to be an entity for which data is available in the WHOIS database of the registrar of the domain name.

Copies of WHOIS printouts recently made by the Panel are attached hereto as Appendices A and B. The word "holder" does not appear on them. Information pertinent to who holds a registration is displayed under the heading "Registrant:". See also Complaint Exhibit A.

It follows from these observations that the Respondent is an entity that is the "registrant" of a domain name registration against which the Complaint was initiated.

On March 28, 2000, the Registrar replied to the Center in language that, in the Panel’s view, again reflects confusion or mistake. It said that Network Solutions "confirms that PC Gateway, Inc. is the current registrant of the PCGATEWAY.COM, PCGATEWAY.NET domain name registrations." (emphasis added)

However, the Complaint does not actually contend that PC Gateway, Inc. is the Registrant of "pcgateway.net". Hence, the Registrar’s report is NOT confirmation of the Complaint. What it "confirms" (if anything) is the Panel’s view that the Complaint produced confusion.

In view of the flawed nature of the Registrar’s report, the Panel does not accept it as evidence that the Registrant of the "pcgateway.net" domain name registration is PC Gateway, Inc. Instead, the Panel relies on the March 10, 2000, WHOIS printout for "pcgateway.net" which is included in Complaint Exhibit A and which shows James Cadieux to be the Registrant.

The Center reviewed the Complaint and concluded that it satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Center on March 28, 2000, sent to the named Respondent (James Cadieux), with a copy to the Complainant, a notification of this administrative proceeding together with a copy of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is March 28, 2000.

No response to the Complaint was received by the Center.

On April 17, 2000, the Center sent to the named Respondent (James Cadieux) a Notification of Respondent’s Default.

The Center extended an invitation to William L. Mathis to serve as Panelist in this case, and on April 27, 2000, he executed and forwarded to the Center his Statement of Acceptance and Declaration of Impartiality and Independence.

The case file was forwarded to the Panel constituted by William L. Mathis on April 28, 2000.

 

4. Factual Background

Complainant asserts that it owns and uses a family of GATEWAY marks "that includes but is not limited to GATEAY, GATEWAY 2000, GATEWAY.COM, GATEWAY.NET (the ‘GATEWAY marks’)." Complaint, Para. 13.

Some of Complainant’s marks are registered in the United States Patent and Trademark Office. Exhibit E to the Complaint includes several registered marks which Complainant says it owns.

Complainant is "a leading direct seller of personal computers, which it sells under the name and mark GATEWAY." Complaint, Para. 12. It has spent much on advertising and its sales have been high. "In 1999 alone, Complainant invested well over Two Hundred Million U.S. Dollars (US$200,000,000) in advertising and promoting GATEWAY marks and sold well over Eight Billion U.S. Dollars (US$8,000,000,000) in products and services under its GATEWAY marks." Complaint, Para. 15.

Included in Exhibit E are a number of Certificates of Registration issued by the United States Patent and Trademark Office. Reg. No. 1,810,503 relates to GATEWAY 2000 for goods identified as "computers and computer peripherals." Reg. No. 1,905,421 relates to GATEWAY 2000 (and design) for similarly described goods. Reg. No. 1,936,340 relates to GATEWAY 2000 DUOLINE (with design) for "credit card services for purchasing computers, computer peripherals or computer software." Reg. No. 2,117,229 relates to GATEWAY 2000 SOLO (with design) for "personal computers and instruction manuals sold therewith." Reg. Nos. 2,173,817 and 2,173,818 relate respectively to GATEWAY 2000 COUNTRY and GATEWAY COUNTRY for "retail stores featuring computers, computer software, computer peripherals, and demonstration of products relating thereto." Reg. No. 2,303,811 relates to GATEWAY MAGAZINE for "publications, namely magazine, catalog, and customer newsletter type publications in the fields of computer hardware and software, computing and information services." Reg. No. 2,322,359 is for GATEWAY.NET for services described as "providing multiple access to a global computer information network for the transfer and dissemination of a wide range of information."

An additional registration identified in Exhibit E is Registration No. 2,073,740 relating to the mark GATEWAY.COM. The registration certificate is not included in Exhibit E, but a United States Patent and Trademark Office assignment record gives June 24, 1997, as the issue date for this registration.

There is not much information in the record about the Respondent or Respondent’s activities related to the domain name in dispute.

According to a WHOIS database sheet included in Exhibit A to the Complaint, the record for "pcgateway.net" was created on November 22, 1999. The Panel understands this to mean that this domain name was registered on or about November 22, 1999.

Exhibit B to the Complaint is a copy of a letter dated February 2, 1999, to a representative of Complainant from an attorney in Bay City Michigan, who said she represented James Cadieux. It is noted that the date of the letter is earlier than the date of registration of the disputed domain name "pcgateway.net". It is of interest nevertheless. It says:

"Mr. Cadieux, since prior to the receipt of your letter, had stopped all use of the word ‘Gateway’ in promoting his computer products. In fact, he has shut down that company and is no longer doing any business with respect to computer products. Mr. Cadieux still owns the rights to the homepage or website ‘P.C. Gateway’. I know that that at that time that particular site was active that he had a hyperlink to your company’s homepage informing individuals who had hit on his page, that he was not Gateway 2000, and if that was the company they were looking for they could hyperlink to your homepage directly. He literally had hundreds of hits on his homepage in that regard. If your company is interested in purchasing the website he would be more than willing to negotiate."

Complaint Exhibit C is a print out of a January 6, 2000 e-mail message to a representative of the Complainant from James Cadieux. It says:

"This is a one-time offer. I am the owner of the domain names:

www.pcgateway.com
www.pcgateway.net

In the past I have had a lot of interest from people wanting to buy these domain names from me. There is a lot of cross traffic on the Internet that hits www.pcgateway.com and www.pcgateway.net from people looking for your website: www.gateway.com.

I am giving you the first and only opportunity to purchase these domain names from me directly prior to listing them for sale on www.ebay.com and other major websites. At the present time both of the above websites are not on-line.

This is the first and only e-mail you will receive from me. You will not be contacted again. If I do not hear from you no later than 12:00 noon on Monday, January 10, 2000, I will assume that your company is not interested. I am asking $1,000,000 dollars for each. The price is not negotiable."

Exhibit G to the Complaint is another e-mail print out. It includes another message dated January 7, 2000, from James Cadieux, and was directed to a representative of Complainant. The first three paragraphs of the message read as follows:

"Your letter was quite interesting and somewhat intimidating. The way you make it sound is like I went out yesterday and registered the domain www.pcgateway.com, then sent you an e-mail asking if you would like to buy the domain for $1,000,000.00. Here are the facts!

I registered my domain name www.pcgateway.com on August 7, 1997. You company registered the domain name www.gateway.com on April 16, 1997. That’s less than 4 months apart. In fact, back in 1997 very few people had ever heard of Gateway, including myself.

My initial e-mail to Gateway was direct and to the point. The main context of my e-mail was ‘I was giving you the first opportunity to purchase these domain names from me directly prior to listing them for sale on the internet’."

Appended to the message was a list of twenty domain names that Mr. Cadieux said were registered. He directed attention particularly to the first item in the list. It reads:

"http://www.gateways.com

Record created on 12-Apr-1995

(This above domain was registered before www.gateway.com)

(Wouldn’t you considered this as Cybersquatting?)".

 

5. Parties’ Contentions

A. Complainant

One contention evidently intended to be put forward in Paragraph 6 of the Complaint is that the Panel should in this case consider ownership of the "pcgateway.com" domain name, "for the sake of efficiency and convenience." From what has been said above, it will be clear that the Panel does not agree. The reasons will be explained more fully below in Section 6.A.

The remaining contentions of the Complainant will be considered insofar as they relate to the domain name "pcgateway.net". They are summarized in paragraph 11 of the Complaint:

(a) The domain name in dispute is identical or confusingly similar to trademarks and service marks in which Complainant has rights;

(b) Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has not appeared or otherwise participated in this administrative proceeding. Hence, no contentions have been advanced by the Respondent.

 

6. Discussion and Findings

A. Basis for Partial Dismissal

The Panel rejects Complainant’s appeal to considerations of "efficiency and convenience" as misplaced and unjustified.

The Policy under which this Administrative Proceeding is being conducted does not envision that an individual Panel’s notions of efficiency and convenience will justify departure from the Rules. Further, Complainant has not explained how efficiency and convenience are in fact served by a Complaint’s failure to name the Registrant of a disputed domain name as a party Respondent.

The formalities in this case are complicated by three factors. First, the relevant WHOIS database gives PC Gateway, Inc. as the "Registrant" of "pcgateway.com" and James Cadieux as the Registrant of "pcgateway.net". Second, the Complaint neither explicitly names PC Gateway, Inc. as a party to the proceeding nor proves that the two names "PC Gateway, Inc." and "James Cadieux" in fact identify a single legal entity. Third, the Rules allow challenges to multiple domain names in a single proceeding only when "the domain names are registered by the same domain-name holder." Rules, Paragraph 3.(c).

The second factor is of substantive significance. This case seeks transfer of a domain name away from its present holder. Paragraph 3.c. of the Policy assures the holder of a domain name that a decision of an Administrative Panel will result in transfer only if made in a "proceeding to which you were a party." (emphasis added) The word "party" is defined in Paragraph 1 of the Rules as meaning "a Complainant or a Respondent". Thus, the Policy and Rules contemplate that the entity from which transfer is sought be named as a party Respondent.

This is easy enough to do. All that is required is that the Complaint identify as a Respondent an entity having a name the same as the name of the Registrant of record. The contract between the Registrar and the Registrant obligates the Registrant to provide accurate information and keep it up to date. If a Registrant fails to do so, he can hardly expect to benefit from his failure. See also Paragraph 2.(a) of the Rules, under which responsibility for providing a Respondent with notice of a Complaint is discharged by relying on the available contact data in the Registrar’s database.

The Panel is of the view that, even in a case contending that two names identify a single legal entity, good practice would dictate that both names be used in the portion of the caption of a Complaint dealing with the Respondent and that the contention be asserted directly in the paragraph dealing with the identity of the Respondent. The phrase "also known as" is at times used in case captions and comparable contexts to signal that both names refer to a single entity. If the administrative personnel at the Center and the Registrar are to carry out their tasks effectively, it is essential that the identity of the Respondent be determinable as a formality, without requiring resort to evaluation of evidence or sophisticated analysis. See in this connection Paragraph 6.(b) of Supplemental Rules: "The Case Administrator … shall have no authority to decide matters of a substantive nature concerning the dispute."

In the present case, the caption of the Complaint does not mention PC Gateway, Inc. as a Respondent. Nor does Paragraph 6 actually say either that PC Gateway, Inc. is a Respondent or that "PC Gateway, Inc." identifies the same legal entity as "James Cadieux", the named Respondent.

Instead, Paragraph 6 calls PC Gateway, Inc. "Mr. Cadieux’ corporation" and refers to evidence proffered to show that "Mr. Cadieux is the ultimate owner" of the domain name "pcgateway.com" and the "he is beneficial owner" of both domain names.

The expression "Mr. Cadieux’ corporation" is not believed to have a precise meaning. The Panel understands it to suggest that Mr. Cadieux (one legal entity) owns a significant percentage of the stock (shares) of PC Gateway, Inc. (a second legal entity). If this were true, it would exclude the possibility that "PC Gateway, Inc." and "James Cadieux" are just two names for the same legal entity. It would not exclude the possibility that third parties (e.g., other stockholders or creditors perhaps) also have interests in the corporation PC Gateway, Inc.

The expression "ultimate owner" also lacks precision. The Panel understands it to suggest that Mr. Cadieux owns the stock of a corporation which in turn holds the domain name. Again, the Panel takes this as an indication of separateness of the legal entities.

Separation, of course, brings into focus Paragraph 3.(c) of the Rules, which allows a single complaint to relate to plural domain names only in instances where all of the domain names are registered by the same domain-name holder. That is, the Complaint’s position is inconsistent with compliance with the rule.

The situation is much the same with regard to the "beneficial owner" allegation. The term is imprecise. It suggests to the Panel that there is separate legal ownership, indicating that the two domain names are not "registered by the same domain-name holder." Rules, Paragraph 3.(c).

The evidence relied upon in Paragraph 6 of the Complaint also has been considered.

The inclusion of "jimcadieux" in an email address given in the contact information associated with the "pcgateway.com" domain name registration does not compel a conclusion that "James Cadieux" and "PC Gateway, Inc." identify the same legal entity. On the question of whether or not the entity PC Gateway, Inc., the admitted registrant of "pcgateway.com", has been named as a party Respondent in the Complaint, the Panel will not rely on the type of inferences that one might draw from a failure of a defaulting party to come forward with refutations or explanations of matters raised in the Complaint.

The February 2, 1999, attorney letter (Complaint Exhibit B) refers to a company that was "shut down", but it does not identify that company as being PC Gateway, Inc. Nor does the letter’s indication that the company had ceased doing business "with respect to computer products" justify a conclusion that the company was totally out of business or incapable of holding a domain name registration.

Mr. Cadieux’ assertion in an e-mail to Complainant that he is the owner of the domain name "pcgateway.com" is not conclusive as to the rights of PC Gateway, Inc. There is no showing that this assertion by Mr. Cadieux was authorized by the corporation PC Gateway, Inc. On the present record, Mr. Cadieux’ assertion does not have the evidentiary standing of an admission against interest by PC Gateway, Inc. Moreover, the assertion could have been made in a business context as indicating simply that he was empowered to negotiate for the sale of the domain name as if he were the sole owner. The Panel will not resolve such ambiguities against an entity which Complainant has not chosen to name as a party Respondent in this proceeding.

For these reasons, the Panel finds that the Complaint is formally inadequate to establish that the holder of the registration of the domain name "pcgateway.com" is a Respondent in this proceeding. In this respect, the Complaint fails to comply with at least Paragraph 3.(b)(v) of the Rules. As a consequence, insofar as the Complaint seeks a transfer of this domain name, it is dismissed without prejudice to the submission in another proceeding of a proper complaint against "pcgateway.com".

The Panel concludes, however, that the Complaint is sufficient to permit a decision on the merits of the request for transfer of the registration of "pcgateway.net" from the named Respondent, Mr. Cadieux, to Complainant. The remainder of this Decision will be directed to such subject matter.

B. Complainant’s Rights in Marks

The Panel accepts as true the Complaint’s certified allegations that Complainant is a leading direct seller of personal computers; that it spends a great deal of money on advertising involving marks that include the word "gateway"; that it sells large quantities of computers and related products and services under marks that include the word "gateway"; and that it owns a number of registered marks which include the word "gateway".

The absence from the present record of a trademark registration on GATEWAY (standing alone) for computers has been considered carefully. This circumstance is not of controlling importance. The Policy under which this proceeding is being conducted does not require ownership of a registered mark. Moreover, ownership rights in a mark may be acquired without registration by use of the mark in trade to identify the goods or services of one supplier and distinguish those goods from like goods supplied by others.

Paragraph 13 alleges directly that Complainant "owns and uses … marks that include[s] … GATEWAY…" This has not been controverted by the Respondent.

Accordingly, the Panel finds that Complainant has rights in the trademark GATEWAY sufficient to satisfy the requirements of Paragraphs 4.a.(i) and 4.b.(i) of the Policy.

In any event, "GATEWAY" (standing alone) is not the only one of Complainant’s marks which should be considered in connection with Paragraph 4.a.(i) of the Policy. Included among Complainant’s pertinent marks are GATEWAY 2000, GATEWAY.COM and GATEWAY.NET. Respondent has not challenged Complainant’s ownership of protectable rights in the other marks which Paragraph 13 of the Complaint identifies specifically as members of the GATEWAY family of marks. Indeed, Principle Register registrations have been issued on them.

C. Confusing Similarity

In support of its contention that the "pcgateway.net" domain name in dispute is confusingly similar to a mark in which Complainant has rights, Paragraph 16 of the Complaint explains that the domain name "consists of Complainant’s GATEWAY mark in combination with the commonly-understood abbreviation for ‘personal computer’ which is Complainant’s principle product."

Of course, the addition of ".net" is commonplace when the owner of a mark reflects it in a corresponding domain name. As such, the addition of ".net" accomplishes little if anything toward the avoidance of confusing similarity.

The Panel therefore finds Complainant’s explanation of confusing similarity to be persuasive.

Additionally, the Panel considers it appropriate to consider as well, on the issue of confusing similarity, the other marks in which Complainant has shown rights. These have been considered individually and collectively in the context of Complainant’s massive advertising and sales. The Panel concludes that the overall impression engendered by these additional marks is dominated by GATEWAY. Members of the public familiar with, for example, the GATEWAY 2000 trademark for computers would be likely to identify the "pcgateway.net" domain name with the company that markets the computers.

Complaint Exhibit C contains an expression from the Respondent that may be taken as confirmation of the confusing similarity. This exhibit is a January 6, 2000, e-mail communication from James Cadieux to the Complainant. Mr. Cadieux said: "There is a lot of cross traffic on the internet that hits … www.pcgateway.net from people looking for your website: www.gateway.com".

Accordingly, the Panel finds that the "pcgateway.net" domain name in dispute is confusingly similar to a trademark or service mark in which the Complainant has rights. See Policy, Para. 4.a.(i).

D. The Issue of Bad Faith in Registration and Use of Domain Name

The Panel turns now to the question of whether the disputed domain name "has been registered and is being used in bad faith" within the meaning of Paragraph 4.a.(iii) of the Policy.

Section 4.b. of the Policy under which this administrative proceeding is taking place provides some bases for dealing with the issue of bad faith. It describes sets of circumstances which, if found to exist, "shall be evidence of the registration and use of a domain name in bad faith." Four sets of circumstances are presented in passages (i), (ii), (iii) and (iv). They are presented in the alternative. That is, a finding of the existence of the circumstances in any one of the four descriptions will qualify such circumstances as evidence of the required bad faith.

Passage 4.b.(i) describes circumstances of particular pertinence to this case:

"(i) circumstances indicating that … [Respondent] … registered … the domain name primarily for the purpose of selling … the domain name registration to the complainant … or to a competitor of … complainant, for a valuable consideration in excess of … documented out-of-pocket costs directly related to the domain name."

The February 2, 1999, attorney letter marked as Exhibit B to the Complaint purports to have been authorized by the Respondent, and he has not denied it. The letter was dated months before Mr. Cadieux’s November 22, 1999, registration of the disputed domain name pcgateway.net, but even then Mr. Cadieux expressed interest in selling to Complainant rights to the homepage or website "P.C. Gateway".

Another attempt to sell rights to Complainant is reflected in Complaint Exhibit C, an e-mail message from Respondent dated January 6, 2000. This time the disputed "pcgateway.net" domain name was specifically mentioned. The assertedly non-negotiable asking price for it was $1,000,000.

Complainant’s response offered to pay to Respondent "the nominal costs associated with your registration". Exhibit G, page 3. This offer was brushed aside by Respondent.

There is no evidence suggesting that Respondent’s purpose in registering the name was anything other than trying to sell it.

This evidence compels a conclusion that Respondent registered the "pcgateway.net" domain name primarily for the purpose of selling the domain name registration to the Complainant for an amount in excess of the Respondent’s costs. Accordingly, the Panel finds that the circumstances described in Paragraph 4.b.(I) of the Policy were present and that, therefore, the disputed domain name has been registered and is being used in bad faith within the meaning of Paragraph 4.a.(iii) of the Policy.

E. The Issue of Whether Respondent Has Rights or Legitimate Interests

Section 4.c. of the Policy describes some circumstances which, if found to be proved, will demonstrate that a respondent has rights or legitimate interests in respect of a domain name. The Panel finds that none of the described circumstances has been established by the evidence in the record of this case and that Respondent has "no rights or legitimate interests in respect of the domain name" within the meaning of Paragraph 4.a.(ii) of the Policy.

The Panel has considered the assertions in Mr. Cadieux's January 7, 2000, e-mail message (Complaint Exhibit G) that he had not "ever heard of Gateway" in 1997, and that he registered the domain name "www.pcgateway.com" on August 7, 1997. Even if these were proven facts in the record of this proceeding, it is the opinion of the Panel that they would not establish the existence of the circumstances described in Paragraph 4.c.(i) of the Policy. Note that this provision of the Policy refers not to mere registration of a domain name but rather to its use "in connection with a bona fide offering of goods or services." Note also that the Complainant registered its GATEWAY 2000 trademark for computers in 1995 on the Principle Register maintained by the United States Patent and Trademark Office.

 

7. Decision

For these reasons, the Panel decides that the "pcgateway.net" domain name in dispute is confusingly similar to a mark in which the Complainant has rights, and that the Respondent does not have rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.

Accordingly, the Panel requires that the registration of the domain name "pcgateway.net" be transferred to the Complainant.

 


 

William L. Mathis
Panelist

Dated: May 25, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0198.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Разработка сайта
ArtStyle Group

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.