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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway Inc. v. Exotic Design Group

Case No. D2008-0051

 

1. The Parties

Complainant is Gateway Inc., of Irvine, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, of Chicago, Illinois, United States of America.

Respondent is Exotic Design Group, 2400 Oxford Dr., PMB 301, Bethel Park, PA 15102, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <gatewaylaptops.com> (the “Disputed Domain Name”) is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2008. On January 15, 2008, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2008, eNom transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on January 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 11, 2008.

Respondent sent an e-mail communication to the Center on February 13, 2008. Complainant submitted an unsolicited supplemental filing to the Center on February 18, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 19, 2008. 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

Complainant states that it “is a national manufacturer and distributor of personal computers, consumer electronics products, enterprise systems, communication tools, applications, and a full complement of related products and services, with net sales reaching $3.9 billion in 2006.”

Complainant states that it has registered “a family of marks revolving around the central term ‘GATEWAY’” in at least 37 countries (the “GATEWAY Marks”). These marks include the following in the United States:

Mark	U.S. Reg. No.	Date of registration	Goods/services
GATEWAY COUNTRY	2,173,818	July 14, 1998	retail stores featuring computers, computer software, computer peripherals, and demonstration of products relating thereto
GATEWAY.COM	2,073,470	June 24, 1997	business management and consulting services in the field of connecting businesses to a global computer network

Complainant states that it “maintains a significant Internet presence through its web site at <Gateway.com>, which provides information about Gateway and its computer and computer-related products and services, and also owns and has registered the domain names <gatewaycomputers.com> and <gateway-laptops.com>.”

The Disputed Domain Name was created on November 21, 2004. According to a printout provided as an exhibit by Complainant, a website using the Disputed Domain Name contains numerous links, including those labeled “Gateway Laptops”, “Used Sun Microsystems”, and “Used Cisco Equipment.”

 

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- Complainant has rights in the GATEWAY Marks based upon its cited trademark registrations in 37 countries – and the marks have become famous as a result of Complainant’s “effort, money, skill and other resources,” including the investment of “many millions of dollars in promoting the GATEWAY Marks” and the sale of “many billions of dollars in products and services under the GATEWAY Marks.” The Disputed Domain Name is confusingly similar to the GATEWAY Marks because it “consists of Gateway’s GATEWAY mark in combination with the generic term for one of Gateway’s principal products, namely laptop computers.”

- Respondent lacks rights in the Disputed Domain Name because Respondent is not an authorized dealer or reseller of Complainant’s products; Respondent is not licensed or otherwise authorized to use the GATEWAY Marks or act on Complainant’s behalf; Respondent registered the Disputed Domain Name “[l]ong after the GATEWAY Marks became famous in the United States and in certain foreign jurisdictions”; and “Respondent is using the GATEWAY Marks to attract people who are interested in Gateway computer, and diverting them to sites advertising and selling non-Gateway computers.”

- Respondent registered and is using the Disputed Domain Name in bad faith because Respondent had actual and constructive knowledge of the GATEWAY Marks, as evidenced by the links to Complainant’s products on Respondent’s website and by the fame of the GATEWAY Marks; and Respondent is using the Disputed Domain Name in connection with “a web site containing links to non-Gateway web sites, including sites belonging to competitors of Gateway.” Further, Complainant contends that “opportunistic bad faith” exists because “the domain name is so obviously connected with [C]omplainant’s trademark and its products.” (Citing Clad Holdings Corporation v. Administration Local, WIPO Case No. D2005-0124).

B. Respondent

Respondent did not submit a reply in conformance with the Policy. However, in an e-mail sent to the Center after the deadline for a response and without the certification required by paragraph 5(b)(viii) of the Rules, Respondent states, among other things, that because it is based in Pittsburgh, Pennsylvania, which it says has been known as the “gateway” to the west, and because “the Gateway Computers trademark does not cover ‘laptops’ “, Respondent is entitled to use the Disputed Domain Name to “sell laptops out of Gateway Center and call our business Gateway Laptops with our domain.”

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the GATEWAY Marks. Further, previous panels under the Policy have reached the same conclusion. See, e.g., Gateway, Inc. v. High Traffic Pro-Life Domains only $999, WIPO Case No. D2003-0261 (“the mark GATEWAY is protected by federal and common law”).

As to whether the Disputed Domain Name is identical or confusingly similar to the GATEWAY Marks, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “gatewaylaptops”), as it is well-established that the top-level portion of the domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only…, as it is well-established that the top-level domain names… should be disregarded for this purpose”).

Therefore, the only difference between the relevant portion of the Disputed Domain Name (“gatewaylaptops”) and the GATEWAY Marks is the addition of the word “laptops” to the Disputed Domain Name. Given that “laptops” are a type of computer,¹ this Panel believes the reasoning cited by a previous panel in a dispute involving the same complainant is applicable here as well: “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…in which the Complainant conducts its business…” Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s GATEWAY Marks, and the Panel is thus convinced that Complainant has proven the first element of the Policy under paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant alleges that Respondent lacks rights or legitimate interests in the Disputed Domain Name because Respondent is not an authorized dealer or reseller of Complainant’s products; Respondent is not licensed or otherwise authorized to use the GATEWAY Marks or act on Complainant’s behalf; Respondent registered the Disputed Domain Name “[l]ong after the GATEWAY Marks became famous in the United States and in certain foreign jurisdictions”; and “Respondent is using the GATEWAY Marks to attract people who are interested in Gateway computers, and diverting them to sites advertising and selling non-Gateway computers.”

Under the Policy, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.

A Respondent may demonstrate its rights or legitimate interests to a domain name by presenting evidence of any of the following:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Policy, paragraph 4(c).

In this case, Respondent has presented no evidence of the above.

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy under paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant 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 that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered 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 registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not specifically allege which, if any, of the four circumstances listed above exists to create bad faith. However, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, Complainant states that Respondent is using the Disputed Domain Name in connection “a web site containing links to non-Gateway web sites, including sites belonging to competitors of Gateway.” An exhibit provided by Complainant supports this statement. Accordingly, Complainant has established the presence of bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy under paragraph 4(a)(iii).

 

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 domain name <gatewaylaptops.com> be transferred to the Complainant.

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Douglas M. Isenberg
Sole Panelist

Dated: February 29, 2008

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¹Indeed, laptop computers apparently now are more popular than desktop computers. "Laptops outsell desktops for first time," USA Today (June 6, 2005) (http://www.usatoday.com/tech/news/2005-06-06-laptops-outsell_x.htm) (visited February 29, 2008).