WIPO Domain Name Decision D2000-0817 for xanax.net

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pharmacia & Upjohn Company v. Xanax Advocates

Case No. D2000-0817

 

1. The Parties

The Complainant is Pharmacia & Upjohn Company, a corporation organized in the State of Delaware, United States of America (USA), with place of business in North Peapack, New Jersey, USA.

The Respondent is xanax advocates, with address in Grapevine, Texas, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on July 18, 2000, and by courier mail received by WIPO on July 20, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On July 26, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On July 31, 2000, WIPO received a Verification Response from the registrar. On August 3, 2000, WIPO completed its formal filing compliance requirements checklist.

(b) On August 3, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent (and its Administrative Contact) via e-mail and courier mail. WIPO�s notification stated that the last day for sending a response to Complainant and WIPO was August 22, 2000. A courier receipt indicates successful delivery of the notification to Respondent�s address.

(c) On August 23, 2000, WIPO transmitted notification to Respondent (and its Administrative Contact) of its default in responding to the complaint via e-mail and courier mail. On August 24, 2000 (7:58 a.m., Geneva time), WIPO received an e-mail response from Respondent�s Administrative Contact, Shannon Ormon, indicating Respondent�s understanding that the final day for submitting a response was August 23, 2000, and that urgent business matters had precluded an earlier response. This response appears to have been transmitted from California before midnight on August 23, 2000 (California time). WIPO advised Respondent that a decision whether to accept or consider the response was in the sole discretion of the Administrative Panel appointed to decide the case.

(d) On August 23, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 23, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On August 28, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by September 10, 2000. On August 28, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

(f) On August 29, 2000, the Panel advised Respondent, Complainant and WIPO that it would accept and consider the response filed by Respondent on August 23/24, 2000 in view of Respondent�s explanation for the brief delay.

 

4. Factual Background

Complainant has provided evidence (Complaint, Exhibit D) of its U.S. Patent and Trademark Office ("USPTO") trademark registration dated July 8, 1980 for "XANAX", number 1,137,561 on the Principal Register. Complainant states that this trademark registration remains valid and subsisting. The validity of Complainant�s trademark registration for "XANAX" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid trademark registration for "XANAX" in the United States.

The trademark "XANAX" is an arbitrary mark (see Complaint, para. 11(a)).

Complainant has used the "XANAX" trademark in commerce in respect to a pharmaceutical used as a tranquilizer and antidepressant. Respondent has not contested Complainant�s use of the trademark in commerce.

Network Solutions� verification response of July 31, 2000, to WIPO indicates that the domain name "XANAX.NET" is registered to Respondent, "xanax advocates", and is in active status. Respondent�s address is listed as "602 Oak Lane, Grapevine, TX 76051-2971, USA". Network Solutions� verification response indicates that Respondent�s Administrative Contact is "Ormon, Shannon", with an address identical to that of Respondent. The e-mail address for Respondent�s Administrative Contact is "kitten@DIRECTLINK.NET". In the e-mail response furnished to WIPO on August 23/24, 2000, "Shannon Ormon" provides the e-mail address "kitten@". This e-mail message to WIPO originated from "kitten@". A printout of a Network Solutions� WHOIS database report dated June 29, 2000 lists Respondent�s Administrative Contact as "Dempsey, Kitt, also with an address identical to Respondent, and also with an e-mail address "kitten@DIRECTLINK.NET". According to the WHOIS database report, the record of registration for the disputed domain name was created on May 27, 1999, and was last updated on June 10, 1999 (Complaint, Exhibit A). The WHOIS database was last updated by the registrar on June 28, 2000.

Respondent indicates that no use of the disputed domain name has been made in connection with establishing or maintaining an active website. Respondent�s Administrative contact indicates an intention "to use the domain for a website, also having nothing to do with Upjohn�s product, in the near future. I have not had sufficient time to do so since the domain�s registration in 1999" (Response). Respondent�s Administrative contact has further indicated that the domain name "is named after my beloved cat", and that a "small network of computers I own for personal use [is entitled] ��" (id.).

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Parties� Contentions

A. Complainant

Complainant states in its own words:

"11. This Complaint is based on the following grounds:

"(a) Pharmacia & Upjohn has valid, subsisting and incontestable rights in its registered mark �XANAX.�

- "Pharmacia & Upjohn, formerly The Upjohn Company, is a research based pharmaceutical company. Pharmacia & Upjohn is one of the leading pharmaceutical companies in the world.

- "Pharmacia & Upjohn and/or its predecessors in interest and title and related companies (collectively �Pharmacia & Upjohn [sic], unless otherwise indicated) has used continuously since at least as early as October 24, 1977 and is currently using in United States commerce and elsewhere around the world the trademark �XANAX� for its brand of alprazolam, a tranquilizer used in the short-term relief of symptoms of anxiety or the treatment of anxiety disorders. An entry for �XANAX� product from the Physician�s Desk Reference is attached hereto as [an Annex].

- "Pharmacia & Upjohn's �XANAX� trademark is inherently distinctive. �XANAX� is a coined, fanciful term having no denotative meaning.

- "The �XANAX� mark is registered on the Principal Register in the United States Patent and Trademark Office for �pharmaceutical for use as a tranquilizer and antidepressant� as Registration No. 1,137,561, issued July 8, 1980. A copy of Registration No. 1,137,561 is attached hereto as [an Annex].

- "Registration No. 1,137,561 is valid, subsisting and incontestable.

- "Pharmacia & Upjohn has invested millions of dollars in research and development related to its �XANAX� product and has also invested significant amounts in educating physicians and other health care providers and the general public regarding the �XANAX� product.

- "Pharmacia & Upjohn has expended millions of dollars in marketing its �XANAX� product.

- "As a result of Pharmacia & Upjohn's efforts and expenditures, Pharmacia & Upjohn has enjoyed substantial commercial success for its �XANAX� product.

- "By virtue of the long and substantially exclusive use in commerce of the �XANAX� mark by Pharmacia & Upjohn, and the commercial success of the product provided under such mark, such mark has become well-known among the relevant trade and purchasing public and among the general public as an indicator of goods originating with, sponsored by, or otherwise associated with Pharmacia & Upjohn, and no other entity.

- "Pharmacia & Upjohn has established substantial goodwill among physicians, health care providers, end users and the general public in the �XANAX� mark and product.

- "�XANAX� is a famous mark, both in the United States and around the world, and the name and mark are accordingly, extremely valuable assets of Pharmacia & Upjohn.

"(b) Respondent has no rights or legitimate interests to the domain name �XANAX.NET.�

- "On May 27, 1999 Respondent registered the domain name �XANAX.NET� with Network Solutions. (See [Annex hereto]).

- "The �XANAX.NET� domain name of Respondent, complained of herein, is legally identical to the �XANAX� trademark in which Pharmacia & Upjohn has rights.

- "Respondent has no rights or legitimate interests to the domain name that is the subject of the Complaint. Respondent owns no trademark registration for �XANAX.� Pharmacia & Upjohn has neither agreed nor consented to Respondent�s use or registration of a domain name comprising the unique, well-known and federally registered �XANAX� trademark.

- "The domain name �XANAX.NET� does not resolve to any web site or online presence.

- "In the period of more than a year since Respondent registered the domain name, Respondent has made no legitimate or commercial use of the name.

"(c) The domain name was registered and is being used in bad faith.

- "The Policy indicates that certain circumstances may, �in particular but without limitation,� be evidence of bad faith (Policy, para. 4(b)). This list is not exhaustive, and other evidence bearing on bad faith should also be considered. See Mondich v. Brown, Case No. D00-0004.

- "Respondent has no intellectual property rights in �XANAX.�

- "Respondent clearly knew or should have known of Pharmacia & Upjohn�s prior adoption, usage and rights in the �XANAX� mark. Since �XANAX� is a coined term with no denotative meaning and since the mark is famous worldwide, it cannot credibly be argued that Respondent arrived at this term independently.

- "It is not necessary to show that a domain name resolves to a web site to show �use� of the domain name under the Policy. See Westfield Corporation, Inc. v. Graeme Michael Hobbs, Case No. D2000-0227 at para. 6.1.6.

- "Respondent�s second level domain name is identical to Complainant�s arbitrary and famous mark.

- "Respondent has never used the domain name in connection with the bona fide offering of any goods or services.

- "Respondent has made and is making no bona fide noncommercial or fair use of the �XANAX� mark or any web site associated with the �XANAX.NET� domain name.

- "While Respondent registered its domain name under the name �xanax advocates� of Grapevine, TX, no such entity exists. See Annex [hereto].

- "In Quixtar Investments, Inc. v. Smithberger, Case No. D2000-0138, Respondent registered the contested domain name under the false name �QUIXTAR-IBO.� The Panel found that �not only is there no such entity as QUIXTAR-IBO, but, in fact, that name itself is false because it suggests an affiliation with the trademark owner (Quixtar) that does not exist... The use of false registration details like these constitutes bad faith.� See Quixtar at para. 6(C). Here, Respondent�s registration under the name �xanax advocates� also suggests a nonexistent affiliation with the trademark owner.

- "In paragraph 7 of Telstra Corp. v. Nuclear Marshmallows, WIPO Center Case No. D00-0003, the Administrative Panel stated that the question of whether a domain name is being used in bad faith �can only be answered in terms of the particular facts of a specific case�, and that �it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.� Accord Mondich v. Brown, Case No. D00-0004 (�possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use�). That decision should be applied here. In that case, as here, the Complainant�s trademark had a strong reputation and was widely known, there was no evidence of any actual or contemplated good faith use of the domain name by the Respondent, and the Respondent was operating under a name that was not a registered business name.

- "The purpose of registration of a domain name may be discerned from subsequent use made of it. Westfield at 6.1.7. Respondent�s failure to make commercial use of the domain name in connection with an active web site in dispute coupled with Respondent�s knowledge of Pharmacia & Upjohn�s prior rights in the mark and Respondent�s lack of any legitimate rights or claim of any kind in the mark compels the conclusion that Respondent registered the mark in bad faith.

- "Accordingly, Pharmacia & Upjohn submits that Respondent�s bad faith in registering �XANAX.NET� is well-established." (Complaint)

Complainant requests that the Panel ask the registrar to transfer the domain name "" from Respondent to it (id., para. 12).

B. Respondent

Respondent states in its own words:

"� I would like to explain why I do not believe it is fair for his domain to be released to the company who has filed this complaint against me.

"According to the Uniform Domain Name Dispute Resolution Policy

�, three elements must be proven by the complaintant [sic] to be true:

"(i) my domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

"I believe this can be interpreted in several different ways. First, the product �xanax� from this company is a commercial product, therefore should use the �.COM� Top Level Domain. My domain is a �.NET� Top Level Domain, meaning its a network called �xanax�. I entitled a small network of computers I own for personal use ��, which is named after my beloved cat, who I've had for a period of 12 years and consider part of the family. I realize that this is identical to the trademarked name �Xanax�, but it has absolutely nothing to do with Upjohn's product.

"(ii) I have no rights or legitimate interests in respect of the domain name.

"I feel that I have very valid rights in respect of the domain name for the above stated reasons about my network named for the cat that I love dearly.

"(iii) My domain name has been registered and is being used in bad faith.

"This is a completely untrue and unfounded accusation. As stated in the next section of this document, the conditions of registering a domain in bad faith include:

"(i) circumstances indicating that I have registered or I 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 your documented out-of-pocket costs directly related to the domain name.

"I absolutely did not acquire this domain for this purpose, and I do not want any amount of compensation for said domain, as I absolutely do not want to lose said domain.

"(ii) I have 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.

"It is my understanding that Upjohn has no interest in utilizing said domain, as they are not using Top Level Domain. It seems to me that Upjohn does not wish to use the domain name ��, but only wishes to deny me the use of the domain.

"(iii) I have registered the domain name primarily for the purpose of disrupting the business of a competitor.

"Once again, a completely unfounded condition on my part.

"(iv) by using the domain name, I have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

"As the owner of , I provide freely available, unix shell Service via a non-profit network, allowing persons to familliarize [sic] themselves with the inner workings of the internet's founding Operating System, and providing such services as �SSH, E-MAIL, IRC, SCREEN, FTP� and other such daemon's normally found upon various Unices. Regardless of whether or not I desire to run an httpd daemon to provide httpd access in the form of a �web site�, the domian [sic] is under valid use, and definately [sic] not in bad faith. I do, however intend to use the domain for a website, also having nothing to do with Upjohn's product, in the near future. I have not had sufficient time to do so since the domain's registration in 1999." (Response)

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this proceeding, Respondent has furnished a Response to the Complaint. Although such Response was furnished shortly following the last day provided for in the Rules for its transmittal, the Panel has exercised its discretion to accept it (see, e.g., Rules, para. 10(c)). Respondent received adequate notice of these proceedings.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) Respondent�s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is the holder of a registered trademark for "XANAX" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant�s registration of the trademark on the Principal Register at the USPTO establishes a presumption of validity of the mark in U.S. law 2, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the trademark "XANAX". Based on the July 8, 1980, date of Complainant�s registration of the trademark "XANAX", and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the trademark arose prior to Respondent�s registration, on May 27, 1999, of the disputed domain name "".

Respondent has registered the domain name "". This name is identical to Complainant�s trademark "XANAX", except that (1) the domain name adds the generic top-level domain name (gTLD) ".net", and (2) the domain name employs lower case letters, while the trademark is generally used with capital letters (see Complaint, Exhibit C).

The addition of the generic top-level domain name (gTLD) ".net" is without legal significance from the standpoint of comparing "" to "XANAX" since use of a gTLD is required of domain name registrants, ".net" is one of only several such gTLDs, and ".net" does not serve to identify a specific enterprise as a source of goods or services 3. Although the three existing open-gTLDs are abbreviated from descriptive labels ("commercial", "network" and "organization"), there are no restrictions regarding the entities or activities that may register or use these open-gTLDs 4. In practice, domain name registrants use each of ".com", ".net" and ".org" for a wide range of purposes. Search engines generally return results that include listings in all three open-gTLDs. The Panel does not regard "" to be materially different from "" (or "") for purposes of comparing it to Complainant�s "XANAX" mark in this proceeding. Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "" is without legal significance from the standpoint of comparing that name to "XANAX" 5.

For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent�s domain name is "identical" to Complainant�s trademark, since Respondent�s domain name "" is without doubt confusingly similar to Complainant�s trademark "XANAX".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

In order to prevail on its claim of abusive domain name registration under the Policy, Complainant must also establish that Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, para. 4(a)(ii)). The Policy expressly enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(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, para. 4(c))

Respondent has not used the disputed domain name in connection with establishing or maintaining an active website. Respondent asserts that it maintains personal computers that it has named "" for its own internal reference. Respondent asserts that it has used these computers to furnish free services on a non-profit network (not identified by the disputed domain name) relating to computer programming. The use of the domain name for internal identification purposes does not constitute use or demonstrable preparation for use "in connection with a bona fide offering" of services in the sense of paragraph 4(c)(i) of the Policy since no use has been made of the name in connection with identifying a service or service provider.

Respondent is listed on its domain name registration as "xanax advocates". Respondent asserts that "", the internal computer network, is named after a cat named "xanax" (see Factual Background and Response, above). Respondent provides no explanation for the seeming lack of connection between its own name, on one side, and its internal network name and cat�s name, on the other. The Panel will not speculate on the nature of this connection. The Panel determines that Respondent has not been commonly known by the domain name for reasons distinct from association with Complainant�s mark so as to establish its own rights or interests in the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

Respondent claims to make internal use of the domain name without using it for external identification. Such use does not constitute legitimate non-commercial or fair "use" of the domain name in the sense of paragraph 4(c)(iii) of the Policy because there is no use of the domain name in connection with identification of a website on the Internet.

Respondent has indicated its intention to use the disputed domain name for a website in the future with an unspecified purpose. Such a declaration of intention does not establish rights or legitimate interests in the disputed domain name.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondent�s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent 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 respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)); (3) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii); or (4) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Complainant�s trademark "XANAX" is an arbitrary mark. The public interest in keeping a term open for common use is substantially less present in respect to arbitrary marks than in respect, for example, to descriptive marks. The principal value of "XANAX" lies in its role as a product identifier, not as vehicle for conveying public information. The principal functions of Complainant�s arbitrary mark are to identify Complainant as the source of a product, and to distinguish this product from other products. Complainant�s mark has a substantial commercial value deriving from these functions. Complainant�s "XANAX" trademark is well known in the pharmaceuticals trade. Absent evidence to the contrary, the most likely conclusion is that Respondent chose to register the mark as a domain name precisely because of Complainant�s longstanding use of the mark in commerce.

Respondent�s registration of "" has prevented Complainant from using its trademark in a corresponding domain name. Complainant has not presented evidence that Respondent may have engaged in a pattern of conduct in regard to similar preclusive registrations. Respondent�s actions therefore do not fall within the express terms of paragraph 4(b)(ii) of the Policy. The Panel recalls, however, that the list of "bad faith" circumstances of registration and use in paragraph 4(b) of the Policy is illustrative, not exclusive. In the context of this case, the Panel determines that Respondent�s registration of the domain name "", corresponding to the arbitrary trademark, "XANAX", is an act of bad faith in respect to Complainant�s interests in that such registration has prevented Complainant from using its mark in a corresponding domain name. Complainant�s trademark has an exclusive connection to a commercial product, and has limited potential utility as a common conveyer of information. Respondent has made no showing that it registered the domain name that incorporates Complainant�s mark for a legitimate purpose.

Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, xanax advovates, has engaged in abusive registration of the domain name "" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name """ be transferred to the Complainant, Pharmacia & Upjohn Company.

 

 

Frederick M. Abbott
Sole Panelist

Dated: September 10, 2000

 

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".net" may be capable of acquiring secondary meaning in another context.

4. See, WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process, , Apr. 30, 1999, WIPO Pub. No. 439 (E), at para. 6, stating, "Three of these [gTLDs] are open, in the sense that there are no restrictions on the persons or entities that may register names in them".

5. See Brookfield, id.,174 F.3d 1036, 1055 (9th Cir. 1999).

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