WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adaptec, Inc. v. Sure Source
Case No. D2000-1488
1. The Parties
The Complainant is Adaptec, Inc., a corporation organized in the State of California, United States of America (USA), with place of business in Milpitas, California, USA.
The Respondent is Sure Source, with address in Trumbull, Connecticut, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "".
The registrar of the disputed domain name is R, with business address in New York, New York, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via courier mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 31, 2000. Following notice of a filing deficiency from WIPO, Complainant transmitted the complaint via e-mail received by WIPO on November 20, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 13, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, R (with the Registrar�s Response received by WIPO on November 21, 2000). Complainant requested the appointment of a three-member panel.
(b) On November 23, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO�s telefax report indicates successful transmission of the notification.
(c) On December 15, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail and courier mail.
d) On January 15, 2001, Complainant via e-mail requested conversion of this proceeding to decision by a single-member panel. On January 16, 2001, WIPO advised Complainant that a single panelist would be appointed to decide this proceeding.
e) On January 10, 2001, 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 January 10, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
f) On January 16, 2001, 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 January 30, 2001. On January 16, 2001, 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.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of trademark and service mark registration for the term "ADAPTEC" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. No. 1,671,656, dated January 14, 1992, in International Class 9, covering integrated circuits, printed circuit boards, and computer peripheral equipment (as further specified), and Reg. No. 2,137,658, dated February 17, 1998, in International Class 42, covering providing access to an on-line bulletin board featuring product information, technical support and product updates. Complainant�s trademark and service mark registration for the "ADAPTEC" trademark claims a date of first use in commerce of January 5, 1983. Complainant is also the holder of registrations on the Principal Register at the USPTO for stylized word and design trademark and service marks for "ADAPTEC, INC.", Reg. No. 1,303,497, dated November 6, 1984, in International Class 9; "ADAPTEC", Reg. No. 2,365,128, dated July 4, 2000, in International Class 9, and; for "ADAPTEC", Reg. No. 2,378,902, dated August 22, 2000, in International Class 42. These registrations are valid and subsisting. (Complaint, Exhibit F)
Complainant has used the "ADAPTEC" mark in commerce since at least November 6, 1984, based on the earliest of the dates of registration of that mark, and without prejudice to whether Complainant may hold earlier-arising rights in the mark.
Complainant has registered the domain names "" and "" and maintains an active website at "www.". On its "" website, Complainant uses the "ADAPTEC" mark to identify itself as the source of products and services. Id., para. I.A, IV.A and Exhibit A.
According to a Network Solutions� WHOIS database report dated January 28, 2001, Respondent is the named registrant for the disputed domain name "". The record for the disputed domain name was created on May 18, 2000, and was last updated on November 17, 2000 (Panel search of January 28, 2001)
Respondent has not used the disputed domain name to identify an active website.
Respondent maintains an active website at "". On the home page for this website, the nature of Respondent�s business is stated as follow:
"Welcome to SureSource, where we ensure your consumers can always find and buy your products. Our innovative, self-funding retail solutions make it easy for your consumers to find and buy your products-anytime, anywhere.
Parts & Accessories Webstores, Make Parts and Accessories Available Via
Web and Toll Free Phone, While Streamlining Your Internal Operation and Cutting Costs.
Full Line, Single-Brand Webstores, Where You Convert Your Web Site Traffic Into Extra Sales, Without Cost or Channel Conflict.
Package Inserts, Where You Tell Consumers About Your Accessories, and Sell Them Through SureSource.
�Where-to-Buy� Services, Where Every Consumer Who Calls You Can Buy Any of Your Products at SureSource." (Panel visit to "" of January 28, 2001)
Respondent�s web page indicates that it acts as a distributor of products of name-brand suppliers, essentially providing an integrated website sales and distribution service. While Respondent�s website lists a number of well-known manufacturers (e.g., "Conair", "Culligan", "Hamilton Beach"), the nature of its legal relationship with those manufacturers cannot be determined from the site. (Complaint, para. II.B and Panel visit, id.)
On September 18, 2000, Complainant (through counsel) sent a cease and desist and transfer demand via certified mail to Respondent (letter from David Dolkas to Todd Holson) (Complaint, para. II.B and Exhibit D). While it is not clear from the Complaint whether any communication between the parties followed this demand, Respondent did not agree to transfer the disputed domain name.
The Service Agreement in effect between Respondent and R subjects Respondent to R�s 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, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states in its own words:
"IV
"Adaptec�s Domain Names and Trademarks
"Adaptec�s Domain Names.
"Adaptec is the owner of several domain names, including www., registered with Network Solutions on August 6, 1992 and www., registered with Network Solutions on October 5, 1998. A represents Adaptec�s sole on-line venue for the distribution of its quality computer hardware and software products and is a logical extension of the Adaptec name and its key trademark � ADAPTEC. Adaptec also has used in commerce since October 1998, when Adaptec launched its Web store.
"Adaptec owns several federally registered trademarks, including:
[See Factual Background, supra]
"Adaptec�s trademarks are arbitrary or suggestive in the context in which they are used and are, therefore, entitled to the broadest protection available under the law. Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 605 (9th Cir. 1987).
"Adaptec�s trademarks are some of the most important and distinctive elements of Adaptec�s brand identification. Adaptec's business, services and products are extensively advertised in newspapers, magazines, trade shows, and by other advertising media through the use of these trademarks. In all of its advertising, the Adaptec name and marks are prominently shown and used to identify Adaptec as the source of high-quality products and services. Adaptec�s trademarks are also prominently displayed on the web site, indicating to consumers all of the quality products and services offered on that web site as emanating from Adaptec.
"Adaptec spends significant resources�time, money, and creativity�developing consumer awareness and goodwill affiliated with its trademarks and promoting its quality products under the Adaptec name. The strength of Adaptec�s brand recognition through its trademarks is evidenced by strong sales (e.g., Adaptec reported net revenues of $811 million for fiscal year 2000). A substantial portion of these sales was made over the Internet and was transacted through Adaptec�s web site .
"V
"ADAPTEC-STORE.COM SHOULD BE TRANSFERRED TO ADAPTEC
"Complainant meets its burden of proof under the Policy, Paragraph 4(a), because Respondent�s registration of the domain name is in �bad faith� as that term is defined under the Policy. First, the Respondent�s domain name is nearly identical and confusingly similar to Complainant�s domain name. Second, Respondent has no rights and no legitimate interest in respect to the domain name . �It is axiomatic in trademark law that the standard test of ownership is priority or use.� Brookfield Comm., Inc. v. West Coast Entertainment Corp., 164 F.3d 1036, 1047 (9th Cir. 1999). Adaptec�s federal registrations of �Adaptec� establish a clear priority in use of the Adaptec marks, precluding other parties such as Respondent from utilizing similar names to trade on Adaptec�s good will. In addition, Adaptec�s use of also predates Registrant�s use of making Adaptec the senior user of this mark as well. Because Respondent is the junior user of any Adaptec mark and its web �store� business is built off other companies� names, Adaptec�s refusal to license its name to Respondent�s obviates Respondent�s need for .
"The third basis for Respondent�s bad faith is that if Respondent intends to obtain Adaptec�s products and actually engage in online sales of those products, by using the domain name, , Respondent will attempt �to attract, for commercial gain, Internet users to [Respondent�s] web site � by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent�s] web site.� Because the �Adaptec� mark is predominantly, if not exclusively, used on the internet to identify Adaptec and its authorized distributors, once becomes active, consumers will inaccurately assume that Respondent is a legitimate distributor of Adaptec�s products or that it is somehow affiliated with Adaptec. The harm to Adaptec from this unauthorized distribution stems from the fact that while the products distributed by authorized Adaptec dealers are subject to significant quality control measures imposed by Adaptec, an unlicensed distributor such as Respondent would not need to abide by these standards and could effectively distribute substandard products under the Adaptec name.
"In addition to unfairly competing with Adaptec�s own on-line store and confusing consumers as to its affiliation with Adaptec, sales of Adaptec products through the web site would also be a clear violation of U.S. copyright law because such sales would be unauthorized and outside the scope of Adaptec�s distribution agreement. Adaptec�s products are distributed only through license agreements, and it is well settled that distribution of copyrighted material outside the scope of a license agreement is copyright infringement absolute. See Microsoft Corp. v. Harmony Computers & Electronics, Inc., 846 F. Supp. 208, 214 (E.D.N.Y. 1994). Accordingly, any attempt by Respondent to launch an on-line store for the distribution of Adaptec products without a license from Adaptec is clearly a bad faith attempt to trade off of Adaptec�s good will." (Complaint)
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent did not reply to Complainant�s contentions.
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. (Footnote 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 have 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 case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail and telefax that Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth 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.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., para. 15(a)).
Complainant is the holder of trademark and service mark registration for the term "ADAPTEC" in the United States and is using that mark in commerce (see Factual Background, supra). (Footnote 2) Complainant�s registration of the "ADAPTEC" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 3) The Panel determines that Complainant has rights in the trademark and service mark "ADAPTEC". Based on the November 6, 1984, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the "ADAPTEC" mark arose prior to Respondent�s registration, on May 18, 2000, of the disputed domain name.
Respondent has registered the domain name "". This domain name (1) incorporates Complainant�s "ADAPTEC" mark (2) adds a hyphen and the term "store" to Complainant�s mark, and (3) adds the generic top-level domain (gTLD) ".com".
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "ADAPTEC" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 4)
Respondent does not, by adding the descriptive term "store" after "ADAPTEC", create a new or different mark in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant. Complainant�s mark identifies it as a source of computer products and services. The term "store" is commonly used to refer to a place where goods and services are offered for sale, and is a term that users of the Internet would expect to be used by Complainant in connection with its mark. This term, when combined with Complainant�s mark, creates a domain name that Internet users are likely to assume is associated with Complainant as a source of products and services on the Internet.
Complainant has registered the domain name "" and has used it to advertise and sell its products at "www.". Respondent�s disputed domain name is distinguished only by the addition of a hyphen between "adaptec" and "store". This increases the likelihood that Internet users would confuse a website identified by the disputed domain name with a website associated with Complainant. Respondent�s addition of a hyphen does little to avoid potential confusion.
The disputed domain name "" is confusingly similar to Complainant�s mark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a trademark and service mark in which 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.
The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy 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) ou 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))
Although Respondent maintains a website under its own name that offers or intends to offer for sale products of third party manufacturers, Respondent has presented to the Panel no indication of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Complainant holds a distinctive trademark and service mark, uses that mark in connection with a web address substantially identical to the disputed domain name registered by Respondent, and has not authorized Respondent to use its mark. The Panel will not in these circumstances draw an inference that Respondent, prior to notice of a dispute, made demonstrable preparations to use the disputed domain name for a bona fide offer of goods or services.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, 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)); and (2) 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)).
The list of bad faith factors in paragraph 4(b) is illustrative, not exhaustive. In this case, Respondent has registered a domain name that directly incorporates Complainant�s distinctive "ADAPTEC" mark and combines it with a descriptive term to yield a disputed domain name virtually identical in form to the domain name used by Complainant to offer its products and services on the Internet. The potential for legitimate use of the disputed domain name is remote, and Respondent has offered no explanation for its registration of that name. The Panel infers based on the evidence presented to it that Respondent registered the disputed domain name with the intent to use it to misleading divert Internet users to its website by creating confusion as to Complainant�s affiliation with or sponsorship of Respondent�s website. The Panel finds this to constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Complainant has 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, Sure Source, 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, Adaptec, Inc.
Frederick M. Abbott
Sole Panelist
Dated: January 29, 2001
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. For purposes of rendering its determination in this proceeding, the Panel does not find it necessary to consider Complainant�s stylized marks.
3. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
4. 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). The term ".com" has been recognized by the USPTO to be capable of acquiring secondary meaning in an appropriate context. See, e.g., America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000.
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