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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
X/Open Company Limited v. Expeditious Investments
Case No. D2002-0294
1. The Parties
The Complainant in this administrative proceeding is X/Open Company Limited, of Apex Plaza, Block A 2nd Floor, Forbury Road, Reading, Berkshire RG1 1AX, United Kingdom, a company incorporated under the laws of the United Kingdom.
The Respondent in this administrative proceeding is Expeditious Investments, PO Box 1431, Bassetterre, St. Kitts & Nevis.
2. The Domain Name and Registrar
The disputed domain name is <unix.com>. The Registrar of the domain name is Network Solutions Inc., Hendon, VA 20170, United States of America.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the WIPO Arbitration and Mediation Center ("the Center") on March 27, 2002, by email and on April 3, 2002, by hardcopy. An Amendment to the Complaint was filed with the Center on April 11, 2002, by email and on April 19, 2002, by hardcopy. On April 22, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondent filed its Response with the Center on May 12, 2002, by email and on May 16, 2002, by hardcopy.
The Administrative Panel consisting of three members was appointed on June 24, 2002, by the Center.
Neither party asked to deliver additional material and the Administrative Panel is content to proceed with the material that was filed.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
Complainant’s factual assertions
The Complainant is a software technology company involved in the development of all operating systems, specifically a comprehensive open systems environment.
The Complainant is the owner of the trade mark UNIX world-wide ("UNIX Marks"). It was the exclusive licensee of the UNIX Marks and under the terms of the license agreement the Complainant had the option to have the UNIX Marks assigned to it. The Complainant exercised its right and is now the registered owner of the UNIX Marks.
The Complainant has traded under the style "The Open Group" since 1996 and any reference to the use of the UNIX Marks by The Open Group relates to use of the mark by the Complainant.
The Open Group is one of the leading vendor-neutral, international consortiums for buyers and suppliers of technology. Its mission is to promote the development of a global information infrastructure that is trusted, reliable and easy to use. The Open Group creates an environment where all elements involved in technology development can co-operate to deliver less costly and more flexible IT solutions. The Open Group is supported by most of the world’s largest IT user organisations, information systems vendors and software suppliers.
The Complainant licenses organisations to use the UNIX mark in relation to its operating system. In order to qualify to use the UNIX mark the operating system must comply with a number of standards of quality, compliance and performance and pass tests.
The Complainant’s Trade Mark Licence Agreement sets out the standards of quality, compliance and performance required to become a licensee of the trade mark UNIX. The Complainant’s mark UNIX is registered extensively throughout the world.
The UNIX Marks are registered world-wide for a wide range of goods and services, including International Classes 9, 16, 38, 41 and 42.
Among the Complainant’s licensees are most of the leading computer companies of the world including: Unisys Corporation, Siemens Nixdorf Informationssysteme AG, Sun Microsystems, Inc., Novell, Inc., Hewlett-Packard Company, AT&T Global Information Solutions, Bull S.A., International Business Machines Corporation (IBM), Digital Equipment Corporation, The Santa Cruz Operation, Inc., Hitachi Limited, Silicon Graphics, Inc., Stratus Computer, Inc., Dansk Data Elektronik A/S, Fujitsu Limited, NEC Corporation and NCR Corporation and others.
The Complainant, its predecessors in business and licensees have made extensive use of the trade mark UNIX throughout the world in respect of computer operating systems, computer related goods and computer related services.
The use of the mark UNIX is so vast that almost every major company in the computer field is an approved user and most companies in the computer sector in Europe will be familiar with, or at least aware of, the activities of the Complainant and the use of the mark UNIX. It is also likely that through the activities of the approved licensees the mark will have been used in every major city in Europe and probably even the smallest city or town given the extent to which computer systems are used in modern society.
The word UNIX is an invented word used in relation to computer software.
The Complainant has not licensed or otherwise permitted the Respondent to use any of the Unix Marks and has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of the UNIX Marks.
The Complainant notes that an application was made on February 23, 2001, for a U.S. Trade Mark for the stylized name "UNIX.COM" in the name of Weis-Griebok, Ltd. When this application is advertised, the Complainant will file an opposition. The Complainant is not aware of the relationship between Weis-Griebok Ltd and the Respondent.
The subject domain name was acquired by the Respondent after it was posted for sale on the internet. The subject domain name was acquired by the Respondent on the May 11, 2000, and appeared for sale on the eBay web site within four days of being acquired.
The Complainant filed a notice of infringement with eBay and eBay confirmed that it had ended the auction. In August 2000 the subject domain name appeared for auction on the <Afternic.com> web site. Again, the Complainant took action and the domain name was withdrawn from the auction.
The subject domain name was registered in 1993 with Mr. Tim Bass listed as the administrative contact. On May 11, 2000, the subject domain name was registered to the Respondent. The administrative contact was given as <email@example.com>. <silkroad.com> is the domain name used by the Silk Road Group which is the computer consultancy company of Mr. Tim Bass. Mr. Bass appears to have been closely involved with the ownership of the subject domain name at all material times.
The subject domain name currently resolves to a web site hosting the "Universal Internet Exchange Forums". The web site offers a bulletin board for registered users to exchange information about the UNIX open systems environment. The use of the subject domain name to operate this bulletin board further creates the impression that the domain name is owned and the bulletin board is operated by or authorized by the Complainant.
Respondent’s factual assertions
The Respondent has for over nine years made non-commercial use of the subject domain name, operating an Internet web-based discussion forum with over 14,000 registered members.
The term "unix" has become generic.
The public uses the term unix to describe a category or family of operating systems, and specifically, multi-tasking, multi-user operating systems made by different companies.
Examples of the different operating systems commonly referred to as unix systems include LINUX, FREE BSD, NET BSD, GNU HURD. There are literally thousands of uses of the term unix in print, on the Internetand elsewhere in the vernacular of computer users world-wide. One popular Internet search engine, <google.com>, produced over twelve million hits and the vast majority of those web pages reviewed used the term in a generic fashion (i.e., without any regard for designation of the origin of the Complainant’s goods).
There is no such thing as UNIX. It has been metamorphosed millions of times, if not billions of times, by many thousands of individuals and companies implementing thousands of variants or "flavors. Official UNIX systems and unofficial UNIX systems are commonly treated as belonging to a single category – in books, in media coverage, on the net and by general social consensus.
This definition of the term "unix" as covering a category of products from many different makers appears to be universal. Numerous technical dictionaries also correctly report how the term unix is used generally by the public including: Dictionary of PC Hardware and Data Communications Terms, NeoWorks Jargon Watch, Boulder Linux Users GroupUnixPower, P2P the Programmer’s Resource Centre Whatis IT Encyclopedia, Simtech-Soft, Computer User High-Tech Dictionary, Webopedia Lycos Tech Glossary, among many others.
The Complainant’s web page states that "recipients of the (at that time free) UNIX system code all began developing their own different versions in their own, different ways for use and sale...the trade mark [UNIX] was ubiquitous, but it was applied to a multitude of different, incompatible products"
The Respondent registered and has continuously used the subject domain name to operate a free speech web site containing forums for discussing issues relating to various unix operating systems, such as tips and strategies, introductory questions, hardware, programming and many more topics. It has done so for over nine years.
The Respondent has never received, expected or aspired to receive any compensation from the registration or operation of the subject domain name.
After over nine years operating its free-speech discussion forum the Respondent has not received a complaint or comment that suggests any consumer was ever mislead by an incorrect "association with the Complainant," as the Complainant asserts.
The Respondent’s primary intent was to operate a protected free speech site and not to acquire the subject domain name primarily to sell it to the Complainant or the Complainant’s competitors.
5. Parties’ Contentions
The Complainant relies on its registration and use of the word "unix" and says that the subject domain name is identical.
The Complainant contends that the Respondent does not have a legitimate interest in the subject domain name because "unix" is an invented word. It is not a word that legitimately would be chosen for a business and the Complainant has not authorized the Respondent to use the word.
Bad faith is said to be established by the facts that the Complainant’s mark is very well known and it is very unlikely that the Respondent did not know this. Reference is made to the fact that the subject domain name was for sale on certain internet auction sites. The connection to Mr. Bass also is relied on.
The Respondent asserts that the word "unix" is generic and that the Complainant no longer has any rights to its use.
Pointing to its use of the subject domain name as a "free-speech" site since 1993, the Respondent says that it has a legitimate interest in the subject domain name. It states that there has been no indication that anyone has ever been confused by its use of the subject domain name or indicated that it was associated with the Complainant. The Respondent’s use has been for a non-commercial purpose and does not offend the Policy.
Bad faith is denied. The Respondent again relies on its long-standing use of the subject domain name and says that the link to Mr. Bass is innocent. It has not offered the subject domain name for sale to the Complainant or to any of its competitors. Its primary purpose in acquiring the subject domain name was to use it in conjunction with its "free-speech" web site and not to sell it.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The parties refer to a number of previous domain name dispute and domestic court decisions. While these are neither controlling nor binding on this Administrative Panel, often reference to them is of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the word "unix". It has registered trademarks and has used the word extensively. The subject domain name is identical except for the addition of .com which is of no consequence.
The Respondent asserts that the Complainant does not have rights to the word "unix" because it has become generic. This is a contention that challenges the legal effect of the Complainant’s registered rights. A domain name dispute usually is not a forum for the resolution of such issues.
The inquiry in this proceeding is whether the Complainant has rights to a mark. Clearly it does so. Whether the Respondent successfully could challenge the efficacy of the Complainant’s registrations is not a matter for this Administrative Panel.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
The subject domain name resolves to a web site at which the Respondent operates a free-speech forum. On the information available to the Administrative Panel, the Respondent has not been compensated for this activity. It has no desire to confuse or to trade on the Complainant’s reputation.
Use of the word "unix" appears to relate to the issues being addressed at the Respondent’s web site
On the information presented to the Administrative Panel, it cannot be said that the Respondent does not have a legitimate interest in the subject domain name.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The Complainant states that its mark is notorious and that the Respondent must have known about it. This contention speaks to bad faith registration. Although the assertion is not dealt with directly by the Respondent, it apparently began to use the subject domain name in 1993. Only recently did the Complainant take issue. On the information provided to the Administrative Panel, there is little to suggest a bad faith registration.
The only information presented to the panel that raises a question of bad faith is the presence of the subject domain name for sale on auction sites. The Respondent’s comments on this matter are somewhat vague, but it denies that it acquired the subject domain name to sell it to the Complainant or its competitors. The Respondent has established a forum for commentary at the website to which the subject domain name resolves and it has not been established that the Respondent's primary intent in registering or acquiring the subject domain name was for the purpose of sale to the Complainant or its competitors.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case. The Complaint is dismissed.
The Respondent contends that the Complainant has attempted to hijack the subject domain name. Although the Administrative Panel has dismissed the claim, it does not conclude that it was brought in bad faith. There apparently is a challenge to the intellectual property rights of the Complainant. The subject domain name was offered for sale on auction sites.
The Administrative Panel does not conclude that the Complainant has attempted to hijack the subject domain name.
Edward C. Chiasson, Q.C.