Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Perot Systems Corporation, Dallas, TX, USA ("Complainant") represented by John W. Patton, Hughes & Luce. The Respondent is Buyperot.com, Baldwin, LA, USA ("Respondent").

The domain name at issue is "buyperot.com", registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Herman D. Michels as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 18, 2000; The Forum received a hard copy of the Complaint on September 18, 2000.

On September 9, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "buyperot.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@buyperot.com by e-mail.

On October 16, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Herman D. Michels as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant contends that it has gained valuable rights in various trademarks including Perot Systems®, perotsystems® (stylized), perot. com™, and perotsystems.com™. In order to protect its rights, Complainant contends that it has registered or applied for registration of each of these marks by the United States Patent & Trademark Office. Complainant further contends that is has continuously used the service mark Perot Systems® in relation to computer related services, including website implementation and hosting.

Complainant contends that Respondent has registered the domain name buyperot.com which is confusingly similar to its Perot Systems marks; that there is a strong likelihood of confusion between Respondent’s buyperot.com domain name and Complainant’s marks at issue; that Respondent does not have any rights or legitimate interests in the domain name buyperot.com, and that Respondent registered and is using the domain name buyperot.com in bad faith. Complainant seeks a transfer of the domain name buyperot.com to it.

B. Respondent

Respondent denies that the its domain name buyperot.com is confusingly similar to Complainants marks perot.com, PerotSystems and perotsystems (stylized), and perotsystems.com. Respondent further contends that its domain name does not infringe on Complainant’s trademarks, that the domain name was not registered in bad faith, and that it was Respondent’s "an alternative to buy Clinton.com". Respondent urges that Complainant’s request for a transfer of the domain name be declined.

Respondent, which was founded in 1988 is a world leader in the field of technology and business consulting and services, including systems management and systems integration. Through use and development, Complainant has gained valuable rights in various trademarks including Perot Systems®, perotsystems® (stylized), perot. com™, and perotsystems.com™. Complainant has registered or applied for registration of each of these marks by the United States Patent & Trademark Office. Complainant has the exclusive right to use its marks Perot Systems®, perotsystems® (stylized), perot. com™, and perotsystems.com™.

Since 1988, Complainant has continually used the service mark Perot Systems in relation to computer related services including website implementation and hosting. This mark was registered on the Supplemental Register of the United States Patent & Trademark Office in 1991 and transferred to the Principal Register in 1997.

As early as 1996, Complainant has used the domain names perot. com™ and perotsystems.com™ as trademarks. These websites garner significant traffic for Complainant and serve as Complainant’s on-line contact with consumers. Complainant filed a U.S. Trademark and Service mark application for each of these marks in January 1999. Since 1996, Complainant has also used the service mark perotsystems® (stylized) in conjunction with computer software design, website design and related services. This mark was registered on the Principal Register in 1999.

Respondent registered the domain name buyperot.com, which is confusingly similar to Complainant’s marks Perot Systems®, perotsystems® (stylized), perot. com™, and perotsystems.com™. See CBS Broadcasting Inc. v. Sale’s, D2000-0255 (WIPO May 8, 2000) (finding the domain name <nycbs.com> confusingly similar to Complainant’s mark (CBS); Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum March 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark "Marriott"); General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPITAL and GECAL) does not alter the underlying mark held by the Complainant, and thus Respondent’s domain names are confusingly similar).

Moreover, Complainant’s trademark users and customers are likely to be confused into believing that there is some affiliation, connection, sponsorship, or approval or association between Respondent and Complainant when, in fact, no such affiliation exists.

Respondent has no rights or legitimate interests in the domain name buyperot.com. The evidence shows that there are no goods or services offered in connection with the domain name buyperot.com.

Respondent has registered the domain name buyperot.com and is using the said name in bad faith. By using the domain name buyperot.com, Respondent intentionally attempted to attract for commercial gain internet users to Respondent’s website or other on-line location, by creating the likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. See Rule 4(b) iv.

Additionally, Respondent registered and used the domain name buyperot.com in bad faith by virtue of the fact that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. See Rule 4(b) iii. It must be remembered that even passive holding of a domain name can be evidence of bad faith registration and use of a domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); Mondich & Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its www site in a two year period raises the inference of registration in bad faith).

Respondent’s activities constitute an infringement of Complainant’s rights in its marks and has caused or will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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;

(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 domain name buyperot.com registered by Respondent is confusingly similar to Complainant’s Perot Systems®, perotsystems® (stylized), perot. com™, and perotsystems.com™ marks in which Complainant has all rights and interests.

The domain name buyperot.com registered by Respondent is confusingly similar to Complainant’s Perot Systems®, perotsystems® (stylized), perot. com™, and perotsystems.com™ marks in which Complainant has all rights and interests.

Respondent does not have any substantial rights or legitimate interests in respect to the domain name buyperot.com.

Respondent has registered and used the domain name buyperot.com in bad faith.

Based upon the above findings and conclusions and pursuant to Rule 4(i) of the Rules of the Uniform Domain Name Dispute Resolution Policy and The National Arbitration Forum’s Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby Order that (1) the domain name buyperot.com, registered by Respondent Buyperot.com be transferred forthwith to Complainant Perot Systems Corporation; and (2) Respondent Buyperot.com shall cease and desist from any and all use of the domain name buyperot.com