ADMINISTRATIVE PANEL DECISION
X/Open Company Limited v. Marshall Sorenson
Case No. D2002-0297
1. The Parties
The Complainant in this administrative proceeding is X/Open Company Limited with its principal place of business at Apex Plaza, Block A 2nd Floor, Forbury Road, Reading, Berkshire RG1 1AX, United Kingdom. The Respondent is Marshall Sorenson whose address is 9864 Grand Verde Way #1513, Boca Raton, FL 33428, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <unix.org>. The domain name was registered by Respondent with Network Solutions Inc. 505 Huntmar Park Drive, Hendon, VA 20170, United States of America.
3. Procedural History
On March 27, 2002, the WIPO Arbitration and Mediation Center ("the Center") received from the Complainant by e-mail a Complaint for a decision in accordance with the Uniform Policy for Domain Name Dispute Resolution. The Center received a hard copy of the Complaint on April 3, 2002. On April 3, 2002 the Center forwarded an Acknowledgement of Complaint to the Complainant. On April 5, 2002 the Center forwarded a Request for Registrar’s Verification to Network Solutions Inc. On April 8, 2002 the Registrar confirmed that the domain name <unix.org> was registered by the Respondent Marshall Sorenson. The Center completed its Administrative Compliance Check on April 22, 2002 and ascertained that the Complaint was filed in compliance with the requirements of the Policy, Rules and the Supplemental Rules and that payment had been properly made to the Centre.
On April 22, 2002 the Center forwarded a Notification of Complaint to the Respondent by e-mail and courier. The Center advised the Respondent that the Administrative Proceeding was commenced on April 22, 2002 and that a response was due by May 12, 2002. The Complainant in this proceeding elected for an Administrative Panel consisting of a Sole Panelist. The Respondent's Response was received by the Center by e-mail on May 15, 2002 and in hard copies on May 16, 2002.
Mr. Ross Carson was appointed as the Sole Panelist and a Notification of Appointment of Administrative Panel and Projected Decision Date of June 24, 2002 was issued by the Center on June 10, 2002. The case file was transmitted to the Panelist Mr. Ross Carson on June 10, 2002.
4. Factual Background
Complainant X/Open Company Limited is a software technology company involved in the development of all operating systems, specifically a comprehensive open systems environment.
Complainant is the owner of the trademark UNIX world-wide ("UNIX Marks"). X-Open used to be the exclusive licensee of the UNIX marks. Under the terms of the license agreement X/Open had the option to have the UNIX marks assigned to it. X/Open exercised its right and is now the registered owner of the UNIX Marks.
The Complainant is the owner of registrations or pending applications for UNIX in relation to computer programs, computer related goods and computer related services in over seventy-five countries throughout the world (Annex 3, pages 22 to 34). Copies of signed License Agreements between X/Open and a number of licensees are attached marked as Annex 4. Among the licensees of X/Open 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. X/Open, its predecessors in business, and licensees have made extensive use of the trademark UNIX throughout the world in respect of computer operating systems, computer related goods and computer related services. The extent of use of the mark UNIX is so extensive that most major companies in the computer field are an approved user of the trademark UNIX.
5. Parties’ Contentions
Complainant contends that
(a) The disputed domain name is identical to the Complainant’s UNIX Marks. The .org part of the domain name should be disregarded as being of a generic nature.
(b) Respondent has no rights or legitimate interests in the domain name. The word UNIX is an invented word used in relation to computer software. UNIX is not a name which traders would legitimately choose unless to create an impression of an association with the Complainant. Complainant has not licensed or otherwise permitted the Respondent to use any of the UNIX marks nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of the UNIX marks.
(c) The domain name has been registered in bad faith.
Complainant’s UNIX marks are very well known and it is extremely unlikely that Respondent would not have been aware of that.
By virtue of the wide spread use and reputation of the UNIX trademark, members of the public and persons in the industry would believe that the entity owning the domain name <unix.orgt> was the Complainant or was in some way associated with or connected with the Complainant.
Any realistic use of the domain name must misrepresent an association with Complainant and its goodwill, and results in passing off and trade mark infringement.
Complainant submits that because Complainant's registration for the UNIX Marks in the U.S. and other countries precede Respondent's registration of the domain name in dispute, Respondent should be held to have constructive notice of the Complainant's mark at the time of registering the domain name.
Complainant submits that Respondent was under an obligation, prior to registration, to perform a Trade Mark search. If Respondent had been acting in good faith he might have registered a different domain name entirely. Complainant cites the decision in Chernow Communications Inc. v. Jonathon D. Kimball, WIPO Case No. D2000-0119, (May 18, 2000). A copy is provided as Annex 6 to the Complaint.
Complainant contends that the fact that the registration of the unix.org domain name has been parked since August 20, 2001, a period of seven months from the domain name registration, is evidence that Respondent does not intend to use the domain name for bona fide purposes.
Respondent contends that:
(a) The Respondent requests the Panel to deny the remedies requested by the Complainant.
(b) The Respondent requests that the Panel make a finding of reverse domain hijacking based on the preponderance of evidence in the Response and the following:
(i) Complainant submitted other complaints against the registering parties of <unix.com>, WIPO Case No. D2002-0294, and <unix.net>, WIPO Case No. D2002-0296, on the same date as this complaint. Respondent feels that the Complainant has been opportunistic in this regard to group Respondent with other organizations by simply modifying the unix.net complaint by replacing all occurrences of <unix.net> with <unix.org>.
(ii) The lack of any attempt on the part of Complainant to contact Respondent before submitting the complaint to pursue a resolution to the dispute is evidence of the complaint being submitted as an afterthought once the complaint against <unix.com> and <unix.net> were prepared. The Respondent submits that the above facts exhibit malice towards the Respondent, as well as abuse of the Policy.
RESPONSE TO STATEMENTS AND ALLEGATIONS MADE IN THE COMPLAINT (Policy, para. 4(a), (b), (c); Rules, para. 5)
The Respondent's first submission is that the Complainant's rights in the UNIX trademark are not enforceable due to obvious and widespread alleged non-enforcement of use of UNIX by others resulting in the trademark becoming a generic identifier of the goods and services provided under the trademark. The Respondent attached as Annex 2 and Annex 3 alleged instances of generic use of the trademark UNIX. Respondent submits that complainant failed to enforce the trademark early on, and could not possibly recover the trademark as an identifier of Complainant's goods and services at this point. Respondent submits that the technology community widely uses the term "unix" to refer to a type of operating system, not a brand of operating system.
The Respondent contends that the Complainant has failed to prove the three elements in Paragraph 4(a) of the Policy.
With respect to Paragraph 4.a.(i) of the Policy, Respondent does not refute the allegation that the domain name in dispute is identical to Complainant's trademark, but submits that the trademark UNIX has become generic due to non-enforcement as stated above.
With respect to Paragraph 4.a.(ii) of the Policy Respondent refutes the allegation that Respondent has no rights or legitimate interests in respect of the domain name in dispute. The Respondent submits that the Complainant's Trademark License Agreement (see Complaint Annex 3, Schedule 5 "Trademark Usage Guide" sec. 1.3 "Use of Trademarks by Third Parties") permits third parties to use the UNIX trademark in articles and for editorial use. The Respondent submits that it was the intention of Respondent to build a non-commercial site of editorials and articles about and in support of the UNIX system based operating systems and compatible software and such activity was permitted by Complainant.
With respect to Paragraph 4.a.(iii) of the Policy which requires the Complainant to prove that the domain name in dispute has been registered and is being used in bad faith the Respondent made a number of submissions.
The Respondent purchased the domain name in dispute for $5,000 USD and poses the question why would the Respondent make such an expenditure without the intent to make a bona fide use of the domain name. The Respondent restates Respondent's intention to develop a non-commercial site for the domain name containing editorials and articles in support of UNIX system-based operating systems and compatible software for the technology community.
The Respondent submits that Respondent started developing the website in August, 2001, immediately after entering into the agreement to purchase the domain name in dispute. A copy of the partially developed web page is attached to the Response and marked Annex 5. The Respondent intended to follow the Complainant's guidelines for third party use. The partially developed web page has a clearly visible attribution to Complainant's ownership of the trademark UNIX as required in Complainant's trade-mark license agreement for third parties. Respondent states that Respondent intended to include hyperlinks to Complainant's web sites on its website. The Respondent had to halt work on the website almost immediately after acquiring the domain name in dispute. The partially developed web page has not been edited since August 15, 2001, which was five days before the domain name was transferred to Respondent's name.
Respondent submits that he does not have a history of being a cybersquatter. Respondent states Respondent owns the domain names owned by the Respondent's corporation Byterage, Inc. Respondent submits that Respondent did not contact or solicit Complainant to sell Complainant the domain name in dispute for profit.
Respondent submitted that the Complainant has failed to establish evidence of registration and use in bad faith (Paragraph 4.b of the Policy). The Respondent submits that there has been no use of the domain name in dispute to date and therefore there could not be a likelihood of confusion (Zuffa LLC v. LGRE, WIPO Case No. D2001-0458, Annex 6 to the Response). The Respondent submits that inference of future activities cannot possibly be used to satisfy Complainant's burden of proof of bad faith since the alleged activities haven’t happened yet (M.T.C. Inc. v. NetL@tino Inc., WIPO Case D2002-0088, Annex 7).
The Respondent submitted that there is no evidence that the Respondent offered to sell the domain name to the Complainant for a sum in excess of Respondent's legitimate costs of acquiring the domain name.
The Respondent attached as Annex 9 to the Response a Network Solutions WHO IS Database for wild-card searches which was able to search for and match over 2,300 currently registered domain names from the .com, .net, and .org TLD's that contained the name "unix". Respondent submits that the registrations set a fair precedent as to what the Complainant considers to be acceptable use of the UNIX trademark. The Respondent refers to the fact that a search of the ICANN UDRP Decisions database yielded no decision of proceedings involving the term "unix" where Complainant was the Complainant.
Respondent's next submission appears to be one of acquiescence submitting that the Complainant has waited nine years since acquiring the trade-mark UNIX before seeking to enforce the trademark UNIX using the UDRP.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of proving three elements:
(i) That the Complainant has rights in a trademark or service mark with which the Respondent's Domain Name is identical or confusingly similar;
(ii) That the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
6.1 Identical or Confusingly Similar Trade-Marks and Domain Names
The Respondent does not dispute the allegation that the domain name in dispute is identical or confusingly similar to the Complainant's trademark UNIX. The domain name <unix.org> is comprised of the Complainant's trademark UNIX together with the generic term ".org". The trade-mark UNIX is a created word and trademark of substantial inherent distinctiveness.
The Respondent submits that the trademark UNIX is unenforceable by reason of loss of distinctiveness caused by alleged generic use by others resulting in the trademark becoming an identifier of goods or services and not an identifier of goods or services of the Complainant. The trademark UNIX has been registered in the United States Patent and Trademark Office since as early as May 6, 1986 in relation to computer programs under International Trademark Classes 9 and 38. The trademark UNIX is a registered trademark or the subject of pending trademark applications in seventy-five or more countries throughout the world. Copies of signed License Agreements between X/Open and a number of licensees are attached and marked as Annex 4. Amongst the licensees are many of the leading computer companies of the world including Unisyi Corporation, Siemens Nixdorf Informationssyteme 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 Electronik A/S, Fujitsu Limited, NEC Corporation and NCR Corporation amongst others. The licensees are entitled to use the trademark UNIX in relation to manuals, training articles, software and other information about the UNIX system.
Annex 5 to the Complaint includes particulars of U.S. Trademark Registration Number 1,392,203 for the Trademark UNIX. The particulars of the registration disclose that the Complainant or its predecessors were Plaintiffs in Opposition proceedings against Serial No. 73705420, UNIXU; Serial No. 74306860, UNIX; Serial No. 74362035, TEAMUNIX; Serial No. 75410254, SYNTUNIX; Serial No. 75436911, @UNIX and Serial No. 75365208, UBIX.
Particulars of United States Trademark Registration No. 1,390,593 for the trademark UNIX states that the Complainant or its predecessors in title were Plaintiffs in Opposition proceedings involving Serial No. 73698917, UNIX; Serial No. 74399958, USIX; Serial No. 74340192, LNX SYSTEMS and was the Plaintiff in Cancellation Proceedings against Serial No. 73458534 for the trademark USA UNIX SYSTEMS ASSOCIATION.
In Annex 2 to the Response the Respondent includes a printout of search results for "UNIX" at Google. Many of the entries include the names of licensees of the UNIX trademark. Other entries relate to reviews, features and commentary about the UNIX system. None of the web addresses include "unix" alone in association with a gTLD or a ccTLD. Attached as Annex 9 to the Response is a list of other registered domain names containing "unix". None of the domain names in the list disclose a domain name consisting of UNIX alone or together with a gTLD or a ccTLD.
The United States registrations are prima facie evidence of the validity of the trademarks. EAuto, L.L.C. v. Triple S. Auto Parts a/b/a/ Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The evidence of the Respondent does show that the trademark UNIX is not used alone without a descriptive qualifier and is not licensed or authorized to be used alone without a descriptive qualifier. The UDRP Policy and Rules are not intended as a forum to decide on loss of the validity of a trademark registration for loss of distinctiveness. There is no opportunity for a Complainant to respond to such an allegation. In any event having regard to the Complainant's License Agreements and actions in defending its trademarks referred to above, the Respondent's evidence presented in this proceeding is insufficient to establish a loss of distinctiveness. The above conclusion is of course of no precedential value should the Respondent wish to attack the validity of the trademark UNIX in another proceeding.
6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain name in dispute. The Respondent submits that the Respondent's demonstrated preparation to use the domain name in dispute is permitted by the Complainant's Trademark License Agreement (see Complaint Annex 3, Schedules 5 of the "Trademark Usage Guide", s.1.3). The section provides that the trademark may be used in editorials or articles where use of the trademark is either desirable or unavoidable. Such use of trademarks is permitted without the requirement for the user to be licensed, provided the rules in the Guide are followed. The Guide states at page 41 that trademarks should be used as adjectives and not as nouns. The domain name in dispute does not constitute a proper use of the trademark as it is not followed by a noun explaining that the site is for editorials and articles in support of the UNIX system based operating system and compatible software.
The Panel finds that the use of UNIX as part of the domain name not followed by a noun is a misuse of the trademark not authorized by the Complainant. The evidence submitted by the Respondent as seen in Annex 2 show the use of UNIX in combination such as UnixReview.com; UNIX Reference Desk and UNIX Training a sponsored link, all being uses of UNIX as an adjective in association with a noun defining the goods or services.
Annex 5 to the Response is a partially developed unix.org web page. The partially developed web page identifies UNIX as a registered trademark of The Open Group. Reviewing the partially developed web page leads one to conclude that the web page is sponsored by The Open Group.
6.3 The third matter which the Complainant must prove is that the domain name has been registered and is being used in bad faith. The trademark UNIX is a created word used in association with an operating system. The trademark is well known to those involved with operating systems. At the time of registration of the domain name the Respondent was aware of the trademark. The Respondent's partially developed web page attributes ownership of the trademark to the Complainant.
The Respondent has been passively holding the domain name for over half a year while the Respondent was involved with another matter. The Respondent states that it was Respondent's intention to develop a non-commercial site for the domain name containing editorials and articles about and in support of UNIX system-based operating systems and compatible software for the technology community.
Paragraph 4 of the UDRP Policy identifies, without limitations, circumstances that "shall be evidence of the registration and use of a domain name in bad faith", for the purposes of paragraph 4(a)(iii). As stated in Telstra Corporation Limited v Nuclear Marshmallows, Case No. D2000-0003 only one of these circumstances (paragraph 4(b)(iv), by necessity involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web site or other on-line location. The Panel in Telstra posed the question … "what circumstances of inaction (passive holding) other than those identified in paragraph 4(b)(i)(ii) and (iii) can constitute a domain name being used in bad faith. A remedy can be obtained under the Uniform Policy only if those circumstances of the Respondent's passive holding amounts to acting in bad faith.
The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name amounts to the Respondent acting in bad faith. The particular circumstances of this case that lead to the conclusion that the passive holding of the domain name is bad faith are:
(i) The Complainant's trademark is a created inherently distinctive trademark.
(ii) The Complainant's trademark is very well known in respect of an operating system and compatible software for the technology community.
(iii) The Complainant licenses the trademark to many of the leading companies in the computer world for use in relation to the operating system and compatible software subject to limitations as to the presentation of the trademark and quality of the system or compatible software. The Complainant licenses third parties to use the trademark as an adjective in association with a noun for articles, review and editorials. The domain name in dispute <unix.org> is stated by the Respondent as intended to be used in association with articles and reviews relating to the UNIX system. The form of the domain name in which the domain name is registered using the trademark as a noun is contrary to the Complainant's Policy for licensees and third parties.
(iv) The Respondent purchased the domain name in dispute for $5,000 U.S.D. from the previous owner. The Respondent's stated intention is to develop a non-commercial site for the domain name containing articles in support of UNIX system-based operating systems and compatible software for the technology community. The home page of Respondent's corporation Byterage, Inc. includes many commercial links including astalavista.box.sk having links to a casino.
The Respondent's partially developed <unix.org> web page which is attached as Annex 5 to the Response features four references to UNIX as a registered trademark of the Complainant and no references to the Respondent. Under the heading "Other valuable resources" of the partially developed web site is a proposed linkage to <sendmail.org>, a web site which includes commercial offers of products and services.
The inference from the above evidence is that the Respondent's planned and partially developed web site while it may include articles relating to the UNIX system is already designed to contain links to commercial sites.
The Panel concludes that the domain name has been registered and is being used in bad faith.
The Panel has considered the Respondent's submissions on the subject of reverse domain hijacking. The Complainant has in the past commenced opposition proceedings, cancellation proceedings and proceedings under the UDRP Policy against others using the trade-mark UNIX as a trademark or the dominant part of a domain name. The Panel concludes that the Complainant has neither been opportunistic nor displayed malice towards the Respondent in this proceeding. The submissions of reverse hijacking are not supported by the evidence.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <unix.org> be transferred to the Complainant.
Dated: June 24, 2002