WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gateway Inc. v. Registrant [6999] (whoisdatashield@); Moniker Privacy Services / Registrant [1237600] Hong Kong Names LLC
Case No. D2008-0054
1. The Parties
Complainant is Gateway Inc. of Irvine, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Registrant [6999] (whoisdatashield@); Moniker Privacy Services, of Pompano Beach, Florida, United States of America, and Registrant [1237600]: Hong Kong Names LLC of Hong Kong SAR of China.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
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 email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 16, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 21, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on January 25, 2008. 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 Respondent of the Complaint, and the proceedings commenced on January 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on March 4, 2008. he 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 is the owner of trademark registrations for or including GATEWAY registered in at least 37 countries throughout the world. The registrations are in respect to goods in International Class 9, computers and computer peripherals, and/or in respect to services in International Class 35, retail store services featuring computers, computer software, computer peripherals; product demonstrations, and/or in respect to services in International Class 42 consulting, marketing assistance, and technical support for reseller of computers and computer peripherals. The registration dates of the trademarks for or including GATEWAY commence as early as 1992. Most of the registered trademarks for or including GATEWAY registered in forty different countries referred to above have registration dates which precede the date of registration of the domain name in dispute of August 15, 2001.
Complainant 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. Since at least as early as 1986, long prior to Respondent’s registration of the domain name in dispute, Complainant adopted, and has continuously used and promoted since that adoption, a family of marks revolving around the central term GATEWAY in connection with computers and computer peripherals products and related services. Complainant has invested many millions of dollars in promoting its trademarks for or including GATEWAY and has sold many billions of dollars in products and services under its trademarks for or including GATEWAY.
Complainant also maintains a significant Internet presence through its website at , which provides information about Complainant and its computers and computer-related products and services.
As a result of Complainant’s investment of its effort, money, skill and other resources, Complainant’s trademarks for or including GATEWAY are widely recognized as indicating goods and services emanating from Complainant.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that the domain name at issue, , consists of Complainant’s trademark for GATEWAY in combination with the generic term for one of Complainant’s principal products, namely laptop computers. The combination is likely to be mistakenly associated with Complainant and its GATEWAY mark and domain names. Complainant refers the Panel to the instructive rulings in Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604; Gateway, Inc. v. High Traffic Pro-Life Domains, WIPO Case No. D2003-0261; and Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129. In these rulings, WIPO Panels found the domain names , and to be confusingly similar to Complainant’s GATEWAY marks and domain name. The domain names at issue in those cases are functionally identical to the domain name in dispute here, as all four involve Complainant’s GATEWAY trademark followed by the generic term for one of Complainant’s principal product lines.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent is neither an authorized dealer or reseller of genuine GATEWAY computers, nor is he licensed or otherwise authorized in any way to use Complainant’s trademarks for or including GATEWAY or act on Complainant’s behalf.
Complainant further submits that long after Complainant’s trademarks for or including GATEWAY became well known and were registered in the United States and in at least thirty seven other countries, Respondent registered the domain name in dispute without any prior rights or legitimate interest in the name GATEWAY. Respondent did not register the domain name in dispute until August 15, 2001, whereas Complainant had done business under the GATEWAY name for over 15 years since at least as early as 1986.
Complainant states that Respondent’s domain name resolves to a website that contains links and directs people to websites, including sites advertising and selling products of Complainant’s direct competitors such as Sony and Toshiba.
Respondent is using the domain name in dispute which is confusingly similar to Complainant’s trademarks for or including GATEWAY to attract people who are interested in Complainant’s computers, and diverting them to sites advertising and selling computers of Complainant’s competitors. This is classic trademark infringement and unfair competition, and further demonstrates bad faith use of the domain name in dispute.
A.3 Registered and Used in Bad Faith
Complainant submits that Respondent’s pairing of Complainant’s trade mark GATEWAY with the generic term “laptop”, one of Complainant’s biggest product lines, is further evidence that at the time Respondent registered the domain name, Respondent was aware of Complainant and its marks and intended to profit off of those marks. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038. (“another indication of the respondent’s knowledge of the trademark BACCARAT is the linking of the word jewelry to the trademark BACCARAT in the domain name. It is clear that the respondent not only knew of the existence of the trademark but also of the fact that it is used in connection with jewelry.”; Accor v. VVNW, Inc., WIPO Case No. D2005-0026. (“[T]he Panel believes that the domain name was registered in bad faith, because the domain name is composed of the complainant’s trademark to which is added the generic term ‘hotel,’ which evokes precisely the services/goods offered by the complainant and associated with the mark. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would register the domain name at issue.”).
Complainant further submits that Respondent’s use of to resolve to a website containing links to websites, including sites belonging to competitors of Complainant, only reinforces the conclusion that Respondent registered and is using the domain name in bad faith. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038 (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”).
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which the Complainant has rights.
Complainant has established that it is registered as the owner of registered trademarks in at least 37 countries for trademarks for or including GATEWAY. The trademarks are registered for goods such as computers and computer peripherals and / or in association with services in International Classes 36, 38, and 42. Most of Complainant’s registered trademarks were registered prior to the date of registration of the domain name in dispute on August 15, 2001.
The domain name in dispute, , consists of Complainant’s trademark for GATEWAY in combination with the generic term for one of Complainant’s principal products, namely laptop computers. See Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604, a case in which the Complainant herein relied on its trademark GATEWAY and the domain name in issue was a combination of Complainants trademark Gateway and the descriptive and generic word “computer”, where the panel stated “…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”.
The domain name in dispute comprised of Complainant’s widely known trademark GATEWAY in combination with the descriptive term “laptop” is confusingly similar to Complainant’s GATEWAY trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto.
The web pages associated with the domain name in dispute display a series of sponsored links relating to laptop computers offered by Complainant and competitors of Complainant. UDRP decisions have consistently found that registrants that “park” their domain names that are confusingly similar to a trademark by using redirecting services with links to the goods or services of a complainant or complainant’s competitors have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
C.1 Domain Name Registered in Bad Faith
By reason of the long and extensive use of Complainant’s trademarks for or including GATEWAY and the extensive advertising of Complainant’s trademarks in association with the sale of computers and computer peripherals and services for which the marks are registered, Complainant’s trademarks for or including GATEWAY were widely known prior to registration of the domain name in dispute on August 15, 2001. Most of Complainant’s registered trademarks for or including GATEWAY were registered prior to the date of registration of the domain name in dispute on August 15, 2001. The word “gateway” is a distinctive word relative to computers and computer peripherals.
The domain name at issue, , consists of Complainant’s trademark for GATEWAY in combination with the generic term for one of Complainant’s principal products, namely laptop computers. It is difficult to conceive how Respondent could have created the domain name in dispute without prior knowledge of Complainant’s registered trademarks for or including GATEWAY and the fact that laptop computers was one of the principal goods sold by Complainant in association with the trademark GATEWAY. Respondent was invited to file a Response. Respondent’s failure to explain any reason for choosing the domain name strengthens the Panel’s inference that Respondent registered the domain name in dispute with knowledge of Complainant’s laptop computers being sold in association with Complainant’s trademark for or including GATEWAY.
The Panel finds that Respondent registered the domain name in dispute in bad faith.
C.2. Domain Name Used in Bad Faith.
Respondent’s use of the domain name in dispute to resolve to a website containing links to websites belonging to Complainant and competitors of Complainant constitutes use of the domain name in bad faith. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038. (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”).
Respondent is using the confusingly similar domain name to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent used the domain name in dispute in bad faith.
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, be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: March 18, 2008
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