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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway Inc. v. Domaincar

Case No. D2006-0604

 

1. The Parties

The Complainant is Gateway Inc., a corporation incorporated under the laws of the State of Delaware, with its principal place of business at Irvine, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.

The Respondent is Domaincar, c/o Perthshire Marketing, Trident Chambers, Road Town, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The Disputed Domain Name, <gatewaycomputers.com>, is registered with DSTR Acquisition VII LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2006. On May 19, 2006, the Center transmitted by email to the Registrar a request for a registrar verification in connection with the Disputed Domain Name at issue on May 26, 2006. The Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint verified 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 on the May 29, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 20, 2006. The Respondent has not filed a Response with the Center.

The Center appointed Alistair Payne as the sole panelist in this matter on June 30, 2006. The panel finds that it was properly constituted. 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.

 

4. Factual Background

The Complainant is Gateway Inc, a U.S. publicly traded manufacturer of personal computers and consumer electronics products and the provider of various services relating thereto. According to the Complainant it achieved net sales of US$3.9 billion in 2005.

The Complainant asserts that it has been continuously using and promoting a family of marks revolving around the central term “GATEWAY” in connection with computer and computer peripheral products and related services since in or around 1986 (the “GATEWAY Marks”). Exhibit D of the Complaint contains details of 40 of the Complainant’s federal trademarks which are registered in the United States Patent and Trademark Office and all of which include the term “GATEWAY” in the word or device mark as the case may be. All but four of the Complainant’s 40 federal trademarks exhibited at Exhibit D of the Complaint are registered in classes for computer or computer related goods or services. The earliest of these registered trademarks is for GATEWAY.COM, which is dated June 24, 1997.

The Respondent registered the Disputed Domain Name on April 7, 2002.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that it has used the GATEWAY Marks on a worldwide basis and is registered, or has applied for registration, in respect of the GATEWAY Marks in the United States of America, as federal trademark registrations, and in several other jurisdictions. The Complainant also states that it has maintained a significant Internet presence through its website at “www.gateway.com” which provides information about the Complainant and its business regarding computers and computer related products and services. In addition, the Complainant asserts that it has invested many millions of dollars in promoting the GATEWAY Marks and has sold many billions of dollars in products and services under the GATEWAY Marks. As a result, the Complainant asserts that through its extensive marketing efforts, substantial sales and the resulting success of its products and services, the GATEWAY trademarks have become famous and that they now represent extraordinary valuable goodwill associated with and owned by the Complainant.

The Complainant submits that the Disputed Domain Name consists of the Complainant’s GATEWAY Mark in combination with the generic term for the Complainant’s principal product i.e. computers. The Complainant refers to two previous WIPO Administrative Panel decisions, Gateway Inc. v. Bellgr Inc (WIPO Case No. D2000-0129) and Gateway Inc. v. High Traffic Pro-Life Domains only $999 (WIPO Case No. D2003-0261), where the domain names <gateway-computer.com> and <gatewaycomputer.com> were respectively held by the Panel in those decisions to be confusingly similar to the Complainant’s GATEWAY Marks.

On the issue of the Respondent’s lack of rights in the Disputed Domain Name and its bad faith in respect of the Disputed Domain Name, the Complainant makes a number of submissions and refers to a number of previous Administrative Panel decisions, details of which are summarised below:

- The Respondent is neither an authorised dealer nor reseller of the Complainant’s computers, nor is it authorised in any way to use the GATEWAY Marks or act on the Complainant’s behalf. In addition, the Respondent is not licensed or otherwise permitted to apply for or use any domain name incorporating the GATEWAY Marks. This proves the Respondent’s lack of rights. (Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and Alta Vista company v. Jean-Daniel Gamanche (NAF Case No. FA0007000095249).

- Long after the GATEWAY Marks became famous in the U.S. and in certain foreign jurisdictions, the Respondent registered the Disputed Domain Name without any prior rights or legitimate interests in the name GATEWAY. The Respondent did not register the Disputed Domain Name until April 7, 2002, whereas the Complainant has done business under the GATEWAY Marks since at least 1986.

- The Disputed Domain Name is being operated as a webpage that contains links to non-Complainant websites including sites belonging to competitors of the Complainant. The first such link on the website at the Disputed Domain Name is to the website of the Complainant’s Competitor, Dell Computers. Such use by the Respondent only reinforces the conclusion that the Respondent registered it and is using the Disputed Domain Name in bad faith. A printout of the website operating at the Disputed Domain Name is exhibited at Exhibit F of the Complaint. (Baccarat SA v. Web Domain Names (WIPO Case No. D2006-0038) and Clad Holdings Corp. v. Administration Local (WIPO Case No. D2005-0124)).

- In or around February 2006, an agent acting on behalf of the Complainant contacted the Respondent at its email address and enquired about purchasing the Disputed Domain Name. The Respondent offered, in a subsequent email, to sell the Disputed Domain Name for US$35,000. A copy of the above-mentioned email correspondence is exhibited at Exhibit G of the Complaint. This offer by the Respondent creates an inference of bad faith under Paragraph 4(b)(i) of the Policy. (Cable News Network LP, LLLP v. Manchester Trading (NAF Case No. FA93634)).

- Due to the fame of the GATEWAY Marks, the Respondent had actual knowledge of the Complainant’s rights. Further, in addition to actual knowledge the Respondent had constructive notice as a matter of law of the Complainant’s trademark rights in the GATEWAY Marks.
(Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028)).

- Because the Respondent had knowledge of the Complainant’s trademark rights in the GATEWAY Marks, the Respondent could not have registered the Disputed Domain Name with the intention of using it legitimately. (Ticketmaster Corp v. Spider Web Design Inc. (WIPO Case No. D2000-1551).

- Because the Respondent has paired the mark GATEWAY with the generic term “computers”, which is the Complainant’s primary product line then this amounts to further evidence that at the time the Respondent registered the Disputed Domain Name, the Respondent was aware of the Complainant and the GATEWAY Marks and intended to profit off the GATEWAY Marks. (Baccarat SA v. Web Domain Names (WIPO Case No. D2006-0038) and Accor v. VVNW Inc. (WIPO Case No. D2005-0026)).

Accordingly, the Complainant submits that the Respondent’s actions establish conclusively that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith in violation of Paragraph 4 of the Policy.

B. Respondent

The Respondent has not filed a Response to the Complaint.

 

6. Discussion and Findings

The Respondent has not filed a Response to the Complaint. Pursuant to Paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.

Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed in this Administrative Proceeding, to prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy. The Panel also notes that pursuant to Paragraph 14(b) of the Rules, the Panel may draw such inferences as it consider appropriate in the absence of a Response from the Respondent.

A. Identical or Confusingly Similar

There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy. First, that the Complainant has rights in a trademark or service mark and second, that the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Panel notes that the Complainant has provided evidence at Exhibit D and Exhibit E of the Complaint that it is the proprietor of various registered trademarks incorporating the GATEWAY Marks. The earliest of the Complainant’s exhibited trademarks, GATEWAY.COM, was registered on June 24, 1997. The Complainant has also provided evidence of substantial common law use of the GATEWAY name and mark since in or around 1986 involving considerable expenditure in promoting and advertising the GATEWAY Marks. Accordingly, the Complainant has established that it has both registered and common law rights in the GATEWAY Marks.

The Disputed Domain Name is not identical to any of the GATEWAY Marks. However, WIPO Administrative Panels have repeatedly held that where a domain name has been invented by a respondent by adding a descriptive or generic word to a distinctive mark, in which a complainant has rights, then such a domain name is to be considered confusingly similar to the complainant’s mark for the purposes of Paragraph 4(a)(i) of the Policy. See for example: Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028), Ladbroke Group plc v. Sonoma International LDC (WIPO Case No. D2002-0131), ACCOR v. VVNW Inc. (WIPO Case No. D2005-0026), Clad Holdings Corporation v. Administration Local (WIPO Case No. D2005-0124), Baccarat SA v. Web Domain Names (WIPO Case No. D2006-0038), Jupiter Limited v. Aaron Hall (WIPO Case No. D2000-0574), Rheem Manufacturing Company v. Domaincar c/o Pertshire Marketing and Domaincar (WIPO Case No. D2006-0502).

The Disputed Domain Name contains the key name and mark of the Complainant gateway and the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business i.e. computers. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s GATEWAY Marks and in particular to the Complainant’s registered trademark, GATEWAY.COM. The Panel notes that this view is consistent with the two previous WIPO Administrative Panel decisions involving the Complainant and referred to by the Complainant in the Complaint namely, Gateway Inc. v. Bellgr Inc. (WIPO Case No. D2000-0129) Gateway Inc. v. High Traffic Pro-Life Domains only $999 and (WIPO Case No. D2003-0261) in which it was held that gateway-computer.com and gatewaycomputer.com respectively were confusingly similar to the Complainant’s GATEWAY Marks. The Panel notes that the Disputed Domain Name only differs from the above-mentioned domain names by the omission of a hyphen and the letter “s” in the first instance and the omission of the letter “s” in the latter.

Accordingly, the Panel finds that the Complaint fulfills paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this assertion.

The Complainant asserts, and the Panel accepts, that the Respondent is not authorised by the Complainant to (i) deal in the Complainant’s goods or services on behalf of the Complainant, (ii) use the GATEWAY Marks or (iii) apply for the Disputed Domain Name or any other domain name relating to the GATEWAY Marks.

Based on the very significant degree of renown of the GATEWAY Marks and the Respondent’s failure to explain either (i) the circumstances in which the Disputed Domain Name was chosen and has subsequently been used or (ii) whether the Respondent has any legitimate interests to the Disputed Domain Name under Paragraph 4(c) of the Policy and (iii) the Respondent’s past conduct (see below), the Panel infers that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Complaint fulfills paragraph 4(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration or subsequent use of the Disputed Domain Name in bad faith. The Panel notes that the Complainant need only prove one of the four grounds set out in Paragraph 4(b) of the Policy in order to succeed in demonstrating that the Respondent had registered the Disputed Domain Name in bad faith.

The GATEWAY Marks appear to have considerable renown attaching to them in the United States and worldwide and were long established prior to the registration by the Respondent of the Disputed Domain Name. The Panel is of the view that at the time the Respondent registered the Disputed Domain Name, the Respondent is more than likely to have been well aware of the GATEWAY Marks.

The Complainant relies upon two grounds under Paragraph 4(b) of the Policy, namely (i) that the Respondent has by using the domain name intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between the GATEWAY Marks and the Disputed Domain Name (Paragraph 4(b)(iv) of the Policy) and (ii) that the Disputed Domain Name was registered by the Respondent primarily for the purposes of selling it to the Complainant (Paragraph 4(b)(i) of the Policy).

(i) Paragraph 4(b)(iv) of the Policy

The Complainant has exhibited a printout of the website being operated at the Disputed Domain Name at Exhibit F. The printout clearly demonstrates that the website at the Disputed Domain Name contains links to several third party websites not associated with the Complainant including sites belonging to the competitors of the Complainant, namely Dell and Toshiba.

The Panel notes that the website contains sponsored links, from which the Panel infers that the Respondent generates an income. The Administrative Panel in The Vanguard Group Inc. v. Lorna Kang (WIPO Case No. D2002-1064) made a similar inference, where it was held that:

“it is well known that many websites generate revenue from click-through advertising, by directing traffic to other websites, and other online marketing techniques. In the absence of any reply by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent in that manner.”

Therefore, as the Respondent has offered no explanation as to why the Disputed Domain Name was chosen, pursuant to Paragraph 14(b) of the Rules, the Panel is entitled to draw the inference that the Respondent registered, and is using, the Disputed Domain Name in order to capitalise, for commercial gain, on the reputation of the Complainant. The Panel also notes that the Administrative Panel in Jupiter Limited v. Aaron Hall (WIPO Case No. D2000-0574) drew a similar inference and this inference is further supported by the very significant history of past conduct by the Respondent as noted below.

Accordingly, the Panel finds that the Disputed Domain Name is being used intentionally by the Respondent to attract, for commercial gain, Internet users by creating a likelihood of confusion between the GATEWAY Marks and the Disputed Domain Name so as to amount to bad faith under Paragraph 4(b)(iv) of the Policy.

(ii) Paragraph 4(b)(i) of the Policy

In relation to Paragraph 4(b)(i) of the Policy, the Panel notes the Complainant’s evidence that the Respondent had offered to sell the Disputed Domain Name to the Complainant for US$35,000. However, the Panel notes from the email correspondence exhibited at Exhibit G of the Complaint that the Respondent’s email stating its willingness to sell the domain name for $35,000 only occurred after a significant number of previous emails were sent by an agent for the Complainant seeking to purchase the Disputed Domain Name. The Panel does note that the price stated by the Respondent of US$35,000 would appear to amount to valuable consideration far in excess of the Respondent’s out of pocket expenses directly relating to the Disputed Domain Name. However, on the basis of the evidence submitted by the Complainant and in the absence of any evidence from the Respondent, the Panel is reluctant, on the grounds above, and on the balance of probabilities, to find that the Disputed Domain Name was registered by the Respondent “primarily for the purposes of selling” the Disputed Domain Name to the Complainant.

Respondent’s Past Conduct

The Panel notes the recent Administrative Panel decision in Rheem Manufacturing v. Domaincar c/o Pertshire Marketing and Domaincar (WIPO Case No. D2006-0502), a decision which also involved the Respondent, in which it was noted that the Respondent and/or its associated entity “Unasi” have been found to have registered and used numerous other domain names in bad faith in at least 70 other WIPO Administrative Panel decisions.

In summary, the Panel finds that the Complaint fulfills paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <gatewaycomputers.com> be transferred to the Complainant.

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Alistair Payne
Sole Panelist

Dated: July 6, 2006