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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gateway, Inc. v. Bellgr, Inc.
Case No. D2000-0129
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.
Respondent is Bellgr, Inc., 20195 NYS Rt. 3, Watertown, New York, 13601, USA.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name "gateway-computer.com".
The registrar with which the domain name is registered is:
Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, VA 20170
Phone: (703) 742-0400
3. Procedural History
The Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2000. Payment of the required fee was made by Complainant to the Center.
On March 8, 2000, the Center sent to the Registrar a request for verification of registration data. On the same day, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that the domain name "gateway-computer.com" is registered in the Respondent’s name.
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 Panel agrees with this conclusion.
A notification of this administrative proceeding, together with a copy of the Complaint, was sent to the Respondent. On March 22, 2000, the Center received a Response from the Respondent.
On March 28, 2000, the Center sent an invitation to William L. Mathis to serve as a Panelist in this case, and on the same day, 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 March 29, 2000.
On April 7, 2000, an Administrative Panel Communication was sent by the Center to both the Complainant and the Respondent. It requested that a further statement be provided by the Complainant dealing with the interest of the Complainant in the trademarks and service marks relied upon in the Complaint. The Complainant was requested to provide the further statement by April 12, 2000. The Respondent was invited to submit by April 17, 2000, any comments on Complainant’s further statement.
The Complainant forwarded the requested Supplemental Statement Of Complainant on April 7, 2000.
The Respondent submitted its response to the Supplemental Statement on April 16 and a copy was forwarded to the Complainant on April 17, 2000.
4. Factual Background
Complainant asserts that it is a leading direct seller of computers and that it owns and uses a family of GATEWAY marks of which some are registered with government authorities in the United States and other countries. Exhibit C to the Complaint includes several of Complainant’s marks that are registered in the United States Patent and Trademark Office.
Included in Exhibit C are a number of Certificate of Registrations issued by the United States Patent and Trademark. Marks specifically identified as being included in Complainant’s "family of Gateway marks" are GATEWAY, GATEWAY 2000, GATEWAY.COM and GATEWAY.NET. 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 and 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."
Each of these registration documents identifies the registrant as Gateway 2000, Inc. (Delaware Corporation), 610 Gateway Drive, P.O. Box 2000, North Sioux City, SD.
The difference between the registrant’s name appearing on the documents and the name of the Complainant in this administrative proceeding has been accounted for in the Supplemental Statement Of Complainant. The corporation formally changed its name from "Gateway 2000, Inc." to "Gateway, Inc." in June of 1999 in a filing with the Delaware Secretary of State. Thus, the Complainant corporation is the same corporation which is identified as the registrant in the registration in Exhibit C.
An additional registration identified in Exhibit C is Registration No. 2,073,740 relating to the mark GATEWAY.COM. The registration certificate is not included in Exhibit C, but a United States Patent and Trademark Office assignment record gives June 24, 1997, as the issue date for this registration. The assignment of GATEWAY.COM to Gateway 2000, Inc. was dated March 13, 1997.
Complainant also has provided as Exhibit D a long list of domain names which Complainant says it "owns, uses and has registered." GATEWAY.COM, GATEWAY.NET and GATEWAYCOUNTRY.COM are included in the group. "GATEWAY" is a feature of all the names in the group.
Respondent registered the disputed domain name "gateway-computer.com" with the Registrar (Network Solutions) in August 1999. A printout from the Whois database is attached to the Complaint as Exhibit A. It shows that the Registrar’s record pertaining to the domain name was created on August 10, 1999.
Exhibit E to the Complaint shows that on August 16, 1999, Respondent also registered "HP-COMPUTERS.COM". The Complainant alleges and Respondent does not dispute that "HP" is the "abbreviation for the well-known computer maker Hewlett-Packard." Exhibit F to the Complaint shows that on August 29, 1999, Respondent registered "COMPAQ-COMPUTER.COM". Compaq is another computer maker.
The parties also are in agreement that Respondent offered the domain name in dispute in this case for sale in an eBay auction on or about January 6, 2000.
A further offering of the domain name for sale took place through a web site identified on its home page as "eSAMS.com". The following reference to this site appears in Respondent’s eBay offer as reflected in Exhibit G to the Complaint: "For other internet domain names visit eSAMS.com. Click on ‘Internet Domain Names’ which is listed under PRODUCTS on the home page." Exhibit H to the Complaint bears the date "3/2/00" and includes a printout of "Internet Domain Names" accessed through eSAMS.com. It lists 35 domain names as being for sale. These include "Gateway-Computer.com", "HP-Computers.com", and "Compaq-Computer.com".
5. Parties’ Contentions
The Complainant’s contentions are summarized in Paragraph 11 of the Complaint:
(a) The domain name in dispute is 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.
Respondent offers various contentions intended to counter Complainant’s assertion that the domain name in dispute is confusingly similar to a trademark or service mark in which Complainant has rights. These are not stated with precision but they seem to be based on the following propositions:
· "Gateway" is generic, and no one can trademark a generic name unaccompanied by artwork such as might be found in a logo.
· Confusing similarity cannot be found to exist unless the domain name in dispute is linked to a web page that offers sales or services similar to those of Complainant.
· The domain name was registered in a time frame when Respondent could not "necessarily understand Complainant’s marks without visiting a database or a publication", which Respondent never did.
Respondent also offers various contentions intended to counter Complainant’s assertion that the domain name was registered and is being used in bad faith. These are understood to relate to the following propositions:
· Respondent intended, at the time of its decision to register the domain name with Network Solutions, to use the domain name in connection with its own business.
· Complainant’s proof is inadequate with respect to the amount of money expected from a sale.
· As of the time when Respondent prepared its Response, the disputed domain name was not any longer being offered for sale.
· Respondent’s alleged lack of bad faith is supported by:
(1) Lack of knowledge that transferring a domain name for profit is "frowned upon";
(2) An assertion that Respondent did not intend to infringe the rights of others; and
(3) Respondent’s assertion in the Response that there was no intention then to offer the domain name for sale.
6. Discussion and Findings
A. Complainant’s Rights in Marks and Confusing Similarity
The Panel accepts as true the Complaint’s certified and unchallenged allegations that complainant is a leading direct seller of computers; that it spends a great deal of money on advertising involving marks that include the word "gateway"; that it sells large numbers 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 of GATEWAY (standing alone) for computers has been considered carefully. This circumstance is not of great 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 12(a) alleges directly that Complainant "owns and uses … marks that include[s] … GATEWAY…" This has not been controverted by the Respondent which says it is in the computer servicing and retail sales business. To the contrary, paragraph 9.(d) of the Response shows that Respondent itself recognizes GATEWAY as a "brand" (i.e., a trademark) identifying computers from a particular maker and distinguishing those computers from computers made by other companies.
Respondent’s comments of particular interest in this connection read:
"My company does servicing, networking, and some retail sales. We are an authorized dealer and/or service provider for many brands of computers, printers, and monitors. If you reside in Watertown, N.Y., and your computer (be it a generic, a Compaq, a Hewlett-Packard, or a Gateway) breaks down, odds are that it will find its way into our repair shop."
These comments were presented in the context of an explanation of a reason said to underlie Respondent’s decision to register "gateway-computer.com" as a domain name.
That is, they reflect an understanding held by Respondent at a time before Respondent registered the domain name in dispute.
Respondent is not correct in asserting that "gateway" is generic and therefore incapable of being a trademark. The record does not establish that those members of the public who are relevant to decisions as to which brand of computer should be purchased consider "gateway" to be the name of market category in the computer field. For example, there is no showing that gateway is like main frame or notebook.
Respondent’s comment that "a gateway computer" is a TYPE of computer used in business networking is ambiguous. If it is intended as an assertion that "gateway" is the name of a market category of computers, it is unsupported. If it is intended rather as a way of saying that a computer may be programmed to carry out a "gateway" function in a network, the point would not, even if supported by adequate proofs, establish unprotectability of "gateway" as a trademark. Complainant’s massive advertising and sales are pertinent. Respondent’s comments quoted above show Respondent’s actual recognition of the source identifying power of the GATEWAY mark at the time of the decision to register the domain name in dispute.
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. Additional marks are GATEWAY 2000, GATEWAY.COM and GATEWAY.NET. Respondent has not challenged Complainant’s ownership of protectible rights in the other marks which Paragraph 12(b) of the Complaint identifies specifically as members of the GATEWAY family of marks. Indeed, Principle Register registrations have been issued on all of them.
The Panel has considered whether the domain name in dispute is confusingly similar to these additional marks. The Panel concludes that the overall impression engendered by each of them is dominated by GATEWAY. The same must be said with reference to "gateway-computer.com". Members of the public familiar with, for example, the GATEWAY 2000 trademark for computers probably would incorrectly identify the "gateway-computer.com" domain name with Complainant. The same applies with regard to the other marks in the "family".
Complainant’s Supplemental Statement explained that its official corporate name had been changed in June of 1999 from "Gateway 2000, Inc." to "Gateway, Inc.". It was after this explanation had been submitted that Respondent advanced the contention that the decision to register the domain name in dispute was made at a time when Respondent could not "necessarily understand" Complainant’s marks. Respondents comments in its Supplemental Statement suggest that while Respondent was well aware of Complainant’s use of the GATEWAY 2000 mark, Respondent did not have an awareness of Complainant’s rights in other marks, at least at the time when the domain name was registered.
The Panel does not consider that contention by Respondent to be important to the case before the Panel. Respondent did recognize GATEWAY as a Complainant’s brand. Further, Respondent did know of Complainant’s use of GATEWAY 2000. Still further, Respondent appears to agree that it could have looked up Complainant’s marks or legal names if it has so chosen. Failing to do so does not improve Respondent’s position. Complainant should not be penalized by Respondent’s lack of diligence.
The Panel turns now to Respondent’s apparent contention that confusing similarity cannot be found unless the domain name is linked to a web page that offers products or services similar to those associated with Complainant’s mark. The existence of a web site is not required in order for one to evaluate whether a registered domain name is "confusingly similar to a trademark", as these terms are used in Paragraph 4.c.(i) of the Policy. The words do not mention such a requirement. No justification is apparent for reading in a new requirement. The Panel finds that "confusing similarity" includes similarity of a nature that would be likely to cause those familiar with the trademark to assume that there is a connection of some sort between the trademark owner and the domain name. This exists under the facts of this case.
B. The Issue of Bad Faith in Registration and Use of Domain Name
Section 4.b. of the Uniform Domain Name Dispute Resolution Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Four descriptions 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."
Respondent agrees that it offered the domain name for sale by auction. The Complainant and its competitors were not excluded from the bidding process.
The text passage in Complaint Exhibit G pertaining to the eBay auction presentation draws attention to the possibility of use of the name in connection with an "existing computer sales site." The obvious targets for such a message are the Complainant and its competitors.
The Panel finds that Respondent’s offering of this domain name for sale to all constituted an attempt to sell to Complainant or its competitors. The Panel also finds that in the context of the evidence of record here, the logical targets of the eBay offering were Complainant and its competitors.
The minimum bid for the auction is disputed. However, all of the amounts mentioned exceeded the out-of-pocket costs of registering a domain name. Moreover, it is not believable that Respondent was attempting to lose money. Accordingly, the Panel finds that Respondent’s purpose was to sell for a consideration in excess of its out-of-pocket costs directly related to the domain name.
Respondent notes, however, that there was a time gap between the August 1999 registration of the domain name and the January 2000 eBay auction. Respondent’s president and only employee says "… my purpose for registering it was not to transfer it, but to use it with all best intentions. However, the urgency to raise money became greater, so I listed the domain name with the Internet auction service, Ebay.com." Response, 9(f).
Respondent’s explanation of the allegedly intended use ties in the other domain names "compaq-computer.com" and "hp-computer.com" that Respondent also registered in August 1999, and also offered for sale. The idea was for a web page where the visitor could see "links to the respective computer makers involved". Respondent’s president says he never imagined that there would ever be a problem in obtaining "written permission from the companies."
The objective factual evidence in the record does not support this excuse. No action toward implementation of the plan was taken.
The Panel finds that a primary purpose of registering the domain name was to sell it. This was the only way that obtaining a profit would have been reasonably within the capability of the Respondent. Respondent’s choice in August 1999 to register three domain names that Respondent knew to be linked to prominent computer makers, taken with the later offerings of the names for sale, makes out a compelling case.
The Panel has two comments with respect to the allegation of Respondent’s president that the eSAMS.com listing of the domain name was terminated after this proceeding began and that he does not intend to offer it for sale in the future. First, it is not reasonable to construe the Policy in such a way as to permit a Respondent’s post commencement action to defeat a grant of relief to which the Complainant is otherwise entitled. Second, a mere expression of intent has little if any evidentiary value on an issue of whether Respondent’s use (active or passive) of a domain name is in bad faith.
These findings taken together require a further finding that the circumstances described in Section 4.b.(i) of the Policy exist, so that such circumstances constitute evidence under the Policy of the registration and use of the domain name in bad faith. This evidence prevails over Respondent’s bare assertions of good faith.
C. 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. None of the described circumstances has been established by the evidence in the record of this case. Therefore, the Panel finds that the Respondent has no such rights or legitimate interests.
For these reasons, the Panel decides that the 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 "gateway-computer.com" be transferred to the Complainant.
William L. Mathis
April 28, 2000