Case No. D2005-1229

1. The Parties

The Complainant is Giga-Byte Technology Co. Ltd., Hsin-Tien, Taiwan, Province of China.

The Respondent is Alan Coughlin, doing business as Gigabyte, Costa Mesa, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gigabyte.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2005, naming Alan Coughlin as Respondent. On November 30, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 30, 2005, Network Solutions, LLC transmitted by email to the Center its verification response stating that the registrant is listed as Gigabyte and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 15, 2005, naming Gigabyte as Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced December 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response January 18, 2006. The Response was filed with the Center January 17, 2006.

The Center appointed Alan L. Limbury, C. K. Kwong and David H. Bernstein as panelists in this matter on February 13, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has changed the title of this proceeding to reflect the evidence that Gigabyte is not a legal entity but a business name under which Alan Coughlin carries on business.

Complainant was established in April 1986. It engages in the manufacturing, processing and sales of computer peripheral equipment and component parts, including motherboards. In July 1993, it entered into a joint venture with Intel for the development of Pentium motherboards. In 1994 the Pentium motherboard manufactured by Complainant was recommended by PC magazine in the United States as the Editor’s Choice. In September 1996, Complainant acquired a wholly owned subsidiary in the United States, G.B.T. Inc., a California company. In June 1999, Business Week of the United States ranked Complainant 41^st in the top 100 in the information technology industry. It has won numerous awards throughout the world.

On August 14, 1996, Complainant filed a United States trademark registration application for a mark comprising a large, stylized capital letter G together with the smaller word GIGABYTE in respect of “printed circuit boards, interfaces cards, mainboards” and claiming first use and first use in commerce on June 5, 1996. The application was published for opposition on July 1, 1997, and the mark was registered on the Principal Register (No. 2164576) on June 9, 1998, with the disclaimer ‘no claim is made to the exclusive right to use “gigabyte” apart from the mark as shown’. Complainant registered this mark in Europe on August 12, 1998, (No. 000316943), having applied for it on July 1, 1996.

On November 6, 2002, Complainant applied to register in the United States the stylized mark GIGABYTE TECHNOLOGY for similar products. This was published for opposition on January 13, 2004, and the mark was registered on the Principal register (No. 2829931) on April 6, 2004, with a disclaimer as to the word ‘technology’.

Since March 14, 1996, Complainant has been the registrant of the domain name <giga-byte.com> and has operated a frequently visited website at that address.

In May 1995, Respondent, Mr. Alan Coughlin, a resident of California, at his wife’s suggestion, chose the name “Gigabyte” for his freelance graphic design business, hitherto conducted under his own name. On June 3, 1995, he submitted to a potential client a Graphic Design Proposal Form/Agreement headed “GIGABYTE™ GRAPHIC DESIGN”.

In October, 1996, Respondent sought to acquire the disputed domain name <gigabyte.com> from the previous registrant and in November 1996, agreed to do so. The formalities were completed on February 11, 1997, when Mr. Coughlin registered the disputed domain name in the name Gigabyte as registrant.

In March 2003, Respondent obtained formal registration in California of the business name Gigabyte and began selling laser printer cartridges under that name. On June 7, 2004, Respondent registered (in the name Gigabyte as registrant) the domain names <gigabytewebdesign.com> and <gigabyteprinting.com>. Associated websites went online in July/August 2004 and May 2005 respectively.

For a period ending on September 28, 2005, the website at “www.gigabyte.com” displayed advertisements provided by Google for sales of computer hardware and software, including products of Complainant and its competitors. That day, upon receipt of a ‘cease and desist’ letter from Complainant, Respondent changed the content of the website at “www.gigabyte.com” to that of “www.gigabytewebdesign.com”.

5. Parties’ Contentions

A. Complainant

In addition to its registered trademarks, Complainant claims common law trademark rights in the United States in GIGABYTE, GIGA-BYTE and GIGABYTE TECHNOLOGY, through long and continuous use of those expressions in that country since 1990, and extensive use of the domain <giga-byte.com>. It claims to have used the marks GIGABYTE and GIGABYTE TECHNOLOGY on product packaging, labels, advertising and promotional items and letterheads. In support of this, it produces six “exemplary invoices” from 1996 and 1997 and tax applications by its United States subsidiary showing millions of dollars of gross sales in those years. It contends the word GIGABYTE has become distinctive of its products.

Complainant says the disputed domain name is confusingly similar to Complainant’s marks.

It contends Respondent has no rights or legitimate interests in the disputed domain name, saying the website at “www.gigabyte.com” has never been used in connection with a bona fide offering of goods or services. On September 21, 2005, this was “only a standard catalog website (probably partly automatically generated)…offering links to various computer hard- and software ‘from multiple retailers’“ (only three in fact, says Complainant) which included products of Complainant and of its competitors.

Complainant says Respondent never was and still is not commonly known by the domain name <gigabyte.com> and has not been licensed or otherwise authorized by Complainant to use the GIGABYTE mark(s) in any way.

Complainant says the change of website content upon receipt of the ‘cease and desist’ letter shows Respondent has no content-related interest in the use of the name Gigabyte and that the content until then “was just a kind of placeholder to pretend the domain is in use”, which Complainant characterizes as “pseudo-use”. Thus Complainant says Respondent acknowledges absence of legitimate interest in the disputed domain name.

Complainant says this pseudo-use is for commercial gain, pointing to the advertisements on Respondent’s “www.gigabyte.com” website on September 21, 2005, for various IT products and a banner on the homepage: “Ads by Goooooogle”. Complainant refers to the Google AdSense programme, described by Google as “a fast and easy way for website publishers of all sizes to display relevant Google ads on their website’s content pages and earn money”.

Complainant refers to Respondent’s offering of web design services for the last year under the name “Gigabyte Web Design” and Respondent’s registration two years ago of the fictitious business name “Gigabyte”, in each case for periods significantly shorter than the period Complainant has been in business. Complainant says the only recognizable use of the business name is use as registrant of several domain names, including <gigabyte.com>. Complainant concludes that Respondent is not doing business as “Gigabyte”.

Complainant says the disputed domain name should be considered as having been registered and as being used in bad faith because Respondent knew or should have known of Complainant’s marks when he registered the disputed domain name. In support of this contention, Complainant relies on the publicity of Complainant’s marks as putting Respondent on notice of Complainant’s rights; on the presentation on Respondent’s website at the disputed domain name of Complainant’s products; on Complainant’s trademark application having been filed and that filing having been made public through the USPTO TESS electronic system before the domain name was registered in February 1997, and on Respondent’s presumed knowledge of the computer market, based on the range of computer products on his website at the disputed domain name.

Complainant therefore submits that it can be inferred that Respondent’s registration of the GIGABYTE mark in the disputed domain name was done to prevent Complainant from reflecting the mark in a corresponding domain name and that Respondent should be considered a competitor of Complainant for this purpose. Complainant says that since its registered and unregistered marks were well established in the United States, the use, or in this case the pseudo-use, of a domain which is confusingly similar or identical to those marks must be considered as in bad faith. In particular, the fact that Respondent also displayed products of Complainant proves that Respondent was well aware of Complainant and eliminates any good faith.

Since Respondent’s home page does not reveal who or what the owner of the disputed domain name is, Respondent is now knowingly using the domain name to create confusion with Complainant’s marks and attract third persons to his website for commercial gain, through the placement of so-called “google ads”, to disrupt Complainant’s business by attracting users expecting to find Complainant. So even if one were to consider an unregistered mark not to be existent, the registration of the domain name was and the use still is carried out in bad faith.

B. Respondent

Respondent does not contest that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. However, he says the disclaimer associated with the registration of Complainant’s GIGABYTE mark shows that the USPTO found the word GIGABYTE descriptive of the products for which the mark was registered.

As to legitimacy, he agrees that a “Gigabyte Computer Parts and Software” website, as found by Complainant on September 21, 2005, was located at “www.gigabyte.com” and says this was from approximately March 2004 until September 28, 2005, when it changed to a “Gigabyte Web Design” website. The change was made on receipt of Complainant’s ‘cease and desist’ letter, not for the reason suggested by Complainant but because an allegation of trademark infringement is not to be taken lightly and in an attempt to avoid this proceeding, to investigate Complainant’s allegations and to show Complainant that Respondent had an undisputedly bona fide use for the disputed domain name.

Respondent denies his use of the disputed domain name was a “placeholder” or “pseudo-use”.

Respondent says his activities in connection with the domain names <gigabytewebdesign.com> and <gigabyteprinting.com> prior to the ‘cease and desist’ letter constitute use of the word ‘gigabyte’ and preparations to use the disputed domain name <gigabyte.com> in connection with a web design services business and a printing supplies business. Respondent says the fact that, prior to September 28, 2005, these businesses were only marketed on the Web under the domain names <gigabytewebdesign.com> and <gigabyteprinting.com> does not negate the value of these preparations, citing Goldline International, Inc., v. Goldline, WIPO Case No. D2000-1151: “Preparations for developing a business that could logically be marketed under a certain domain name can constitute legitimate preparations for use, even if the proposed business has no need to use the exact name at issue”.

Respondent says that since the websites “www.gigabytewebdesign.com” and “www.gigabyteprinting.com” were first published on the Web, he has been considering publishing them at “www.gigabyte.com” “but has delayed this decision until he has more information to decide how to make the best use of the domain name <gigabyte.com>.”

Further, Respondent says he has been and is commonly known by the name “Gigabyte”, having performed since 1995 graphic design and website services and having been since 2003, a reseller of printing supplies, in each case using the business name “Gigabyte”. He produces evidence to support this contention.

As to bad faith, Respondent denies all Complainant’s contentions and says in particular that the presentation of Complainant’s products on the “www.gigabyte.com” website on September 21, 2005, does not prove that Respondent was aware of Complainant’s trademark when he registered the disputed domain name on February 11, 1997. Respondent says he had heard of neither Complainant nor its products when he acquired and registered the disputed domain name. The date when Respondent first enquired whether the former registrant would be interested in selling the disputed domain name to him, October 30, 1996, was more than a year and a half before Complainant’s GIGABYTE mark was registered, eight months before the application was published for opposition and less than three months after the application was filed. The TESS electronic system did not commence until 2000, so Respondent could not reasonably have been expected to have been aware of the application.

Respondent says that prior to the ‘cease and desist’ letter, the website at the disputed domain name contained affiliate advertising links to three online retailers and that he received a commission for any purchases made by users gaining access to those retailers through Respondent’s site. He denied his site is misleading.

Respondent claims unregistered trademark rights dating from 1995, in the field of web design services, long before any secondary meaning Complainant’s mark might have achieved. Therefore Respondent claims he has every right to offer his web design services under the GIGABYTE name at the web address “www.gigabyte.com”, as he has been doing since September 28, 2005.

The disputed domain name is the first Respondent ever registered, the next being over four years later. He has never sold a domain name.

Respondent says that even if it were to be determined that Respondent used the disputed domain name in bad faith the Complaint would still have to be denied, due to the indisputable evidence that he registered it in good faith.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires 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.

Under paragraph 4(a) of the Policy, Complainant bears the burden of showing:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) that the domain name has been registered and is being used by Respondent in bad faith.

A. Rights in a mark

Complainant has established that, when it filed this Complaint, it had rights in the stylized registered trademark GIGABYTE (with a disclaimer as to the exclusive use of that word) and in the stylized registered trademark GIGABYTE TECHNOLOGY (with a disclaimer as to the word Technology). The former is insufficient proof of trademark rights because the existence of a disclaimer means that Complainant did not prove to the U.S. Patent and Trademark Office that the disclaimed word, “gigabyte” was a distinctive mark (as contrasted with a generic or merely descriptive mark). That potential obstacle was overcome in the second registration, which has no disclaimer of the word “gigabyte”. Accordingly, the GIGABYTE TECHNOLOGY registration is sufficient to establish trademark rights in the mark GIGABYTE for the purposes of the first element.

Whether Complainant had any trademark rights at common law prior to the registration of the disputed domain name is an issue that arises only in relation to the elements of legitimacy and bad faith. Paragraph 4(a)(i) of the Policy embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., WIPO Case No. D2005-0038 and the cases there cited.

B. Identical or Confusingly Similar

“Essential” or “virtual” identity is sufficient for the purposes of the Policy: see for example The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113. The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9^th Cir. 1979) – which usually are considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480 and the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).

Despite the stylized nature of Complainant’s marks, particularly the GIGABYTE mark, the Panel finds that the disputed domain name is virtually identical and confusingly similar to Complainant’s registered marks.

Complainant has established this element of its case.

C. Rights or Legitimate Interests

Respondent has produced sworn evidence that he adopted the business name GIGABYTE in May 1995 at his wife’s suggestion and began using it shortly thereafter. He has produced cheques, business cards and invoices printed in the name Gigabyte, the latter bearing the web address “www.gigabyte.com”; invoices addressed to Gigabyte; and web design proposals in the name Gigabyte. All of these were produced and in use prior to the ‘cease and desist’ letter.

Respondent has thus demonstrated, pursuant to paragraph 4(c)(ii) of the Policy, that he has rights and legitimate interests in the disputed domain name by satisfying the Panel that his business was commonly known by the name Gigabyte. This evidence also satisfies paragraph 4(c)(i) of the Policy, that Respondent was using the Gigabyte name in connection with a bona fide offering of goods or services prior to any notice of the dispute.

Complainant has failed to establish this element of its case.

D. Registered and Used in Bad Faith

Complainant’s trademarks were not registered until years after Respondent started to use Gigabyte as his business name in 1995, and registered the disputed domain name <gigabyte.com> on February 11, 1997. Even if Complainant had common law trademark rights as of 1995 and 1997 (an issue the Panel need not reach), Complainant has not submitted any evidence to establish that it was so well known to be exclusively associated with the Complainant as of that time that Respondent must have been aware of Complainant and its mark. In the absence of such evidence (and recognizing that the word “gigabyte” is an English language dictionary word for a measure of computer storage), Complainant has not proven that Respondent must have been aware of Complainant’s rights in the GIGABYTE mark when he set about acquiring and registered the domain name.

Moreover, Respondent affirmatively states that he registered the disputed domain name without knowledge of Complainant’s marks. Although it is difficult for UDRP panels to assess sworn testimony that is presented only in written form, Respondent’s assertion does appear credible. Since he had already begun to carry on business under the name Gigabyte, it was natural that he would seek to register a domain name that incorporated his business name. Accordingly Complainant has not satisfied the Panel that the disputed domain name was registered in bad faith. This is fatal to any finding of bad faith under any of sub-paragraphs 4(b)(i)-(iii) of the Policy.

A finding of bad faith registration may nevertheless be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which a domain name was registered. Where, however, there is evidence (as in this case) that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). Even if there were bad faith use in this case (an issue the Panel need not reach), it would not be sufficient to overcome the clear evidence that there was no bad faith registration.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alan L. Limbury Presiding Panelist
C. K. Kwong Panelist	David H. Bernstein Panelist

Dated: February 27, 2006